jrnia 
al 


T 

llpS4-t 


UNIVERSITY 

OF  CALIFORNIA 

LOS  ANGELES 


SCHOOL  OF  LAW 
LBRARY 


A   TBEATISE 


LAW  OF  TRADE  MARKS, 


DIGEST  AND  REVIEW 


ENGLISH  AND  AMERICAN  AUTHORITIES. 


FRANCIS  H.  UPTON,  L.  L.  B. 


Justitia  est  constans  ct  perpetua  voluntas  jus  sunm  cuiquo  tribucndi. 

Just.  Inst.  L.  1.  T.  1. 


ALBANY : 

WEARE    C.    LITTLE,    LAW    BOOKSELLER, 
1860. 


Sntered  according  to  act  of  Congress,  in  the  year  ISCO,  l)y 

WEARE  C.  LITTLE, 

In  ttie  clerli's  office  of  the  District  Court  of  the  United  States,  for  the  Northern 
District  of  New  York. 


T 


■VTEED,  PARSONS  &  COMPANY, 

PP.INTEP.S  AND  STEREOTTPERS. 


PREFACE. 


The  subject  of  this  Treatise  has  assumed  an  interest  and 
importance,  within  the  past  quarter  of  a  century,  not 
inferior  to  that  attached  to  any  branch  of  the  law  connected 
with  the  affairs  of  trade  and  commerce. 

The  instruments  by  which  the  manufacturer  or  the 
merchant,  is  enabled  to  designate  the  merchandise  that  he 
makes,  or  sells,  so  that  its  identity  in  the  marts  of  commerce 
shall  be  faithfully  preserved,  are  often  valuable  beyond 
estimation,  for  the  reason  that  the  merchandise  itself, 
without  these,  would  become  comparatively  valueless. 

The  manner  in  which  property  in  these  instruments  may 
be  acquired ;  by  whom  it  may  be  possessed ;  of  what  such 
instruments  must  consist  in  order  to  entitle  him  who  adopts 
and  uses  them,  to  protection  in  their  exclusive  use  as 
property ;  what  is  in  law,  a  violation  of  such  exclusive  right; 
and  what  are  the  remedies  by  which  such  violation  may  be 
prevented  or  redressed  ;  are  questions,  the  answers  to  which 
constitute  the  law  of  Trade  Marks. 

These  answers  are  only  to  be  found  distributed  through 
the  books  of  reports  of  judicial  decisions  of  the  courts  of 

755623 


4  PREFACE. 

England  and  the  United  States,  and  no  attempt  has  ever 
yet  been  made  to  collate  or  digest  them. 

The  great  inconvenience  arising  from  the  want  of  a  work 
in  which  has  been  performed  the  labor  of  gathering  together 
these  scattered  authorities,  and  extracting  from  them  the 
principles,  and  doctrines,  and  rules,  which  they  are  found  to 
establish,  has  been  often  and  seriously  felt  by  the  author, 
in  the  performance  of  his  professional  duties,  and  is  made 
a  subject  of  complaint  by  his  brethren,  both  of  the  bench 
and  bar,  whenever  a  trade  mark  controversy  arises  for 
investigation,  discussion  or  determination. 

These  considerations,  to  which  may  be  added  the  very 
vague  and  imperfect  notions  which  confessedly  exist  in 
relation  to  this  interesting  branch  of  the  law,  as  well  in  the 
profession  itself,  as  among  laymen,  and  those  whose  business 
interests  require  some  familiarity  with  its  principles,  have 
induced  the  present  undertaking. 

If  it  shall  be  found  to  have  been  performed  in  a  manner 
sufficient  to  remove,  or  even  to  diminish,  the  inconveniences 
heretofore  experienced — especially,  if  it  have  the  effect, 
however  partial  and  limited,  of  causing  juster  ideas  to 
prevail  concerning  the  pecuUar  character  of  property  of 
which  it  treats,  and  of  inducing  a  more  extended  familiarity 
with  the  principles  upon  which  its  recognition  and  protection 
are  based,  the  author  will  have  the  satisfaction  of  having 
discharged  a  portion,  small  though  it  be,  of  that  debt  which 
my  Lord  Bacon  justly  holds  to  be  due,  from  every  man  to 
his  profession. 

New  York,  June,  1860. 


LIST 


CASES  CITED  IN  THIS  TREATISE. 


Page. 
Amoskeag  Manufactuking  Company  vs.  Spear,  2  Sand.  S.  C. 

R,  608, 85-126 

Ames  vs.  King,  2  Gray,  379, 185 

Bailey  vs.  Taylor,  1  Kus.  &  M.,  73, 234 

Bell  vs.  Locke,  8  Paige,  74, 93 

Blanchard  vs.  Hill,  2  Atkins,  284, 12 

Blofield  vs.  Paine,  4  Barn.  &  Adolph.,  410, 122 

Bramwell  vs.  Halcomb,  3  Myl.  &  Cr.,  737, 234 

Burgess  vs.  Burgess,  17  Eng.  Law  and  Eq.  R.,  257, 107 

Burnett  vs.  Phalon,  N.  Y.  S.  C.  (not  yet  reported), 171 

Cantwell  vs.  Lye,  17  Ves.,  335, 61 

Canham  vs.  Jones,  2  Ves.  &  Bea.,  218, 25-117 

Chissam  vs.  Dewes,  5  Rus.  R.,  29, 61 

Christy  vs.  Murphy,  12  How.  Pr.  R.,  77, 93 

Clark  vs.  Clark,  25  Barb.,  76, 145 

Clinton  vs.  Douglass,  1  H.  R.  V.  Johns.,  176, 61 

Coates  vs.  Holbrook,  2  Sand.  Ch.  R.,  586, 124 

CoFFEEN  vs.  Brunton,  4  McLsan,  516, 159 

Cook  vs.  Collingridge,  Jacob's  R.,  62, 61 

CoRincK  vs.  McCubben,  1  Shaw  &  Ballantyne,  540, 61 

Crawshay  vs.  Thompson,  4  Man.  &  Gr.,  357, 122 

Crawshay  vs.  Collins,  15  Ves.,  227, 60 

Croft,  vs.  Day,  7  Beav.,  84, 81 

Clement  vs.  Maddicks,  22  Law  R.,  428, 122-234 

Compere  vs.  Bajou,  Case  8,  Vol.  140,  of  Paris  Court  of  Appeals,  72 

CoRWiN  vs.  Daly  (not  yet  reported), 187 


6  LIST    OF   CASES. 

rAGE. 

Davies  vs.  Hodgson,  25  Beav.,  177, Gl 

Day  vs.  Binning,  1  Coop.  Ch.  R.,  489, 120 

Delondre  vs.  Shaw,  2  Simons,  237, 21 

Doughty  vs.  Van  Nosteand,  1  Hoff.  Ch.  R.,  G8, 61 

Douglas  vs.  Hammond,  5  Yes.,  539, 60 

Edlestone  vs.  Vick,  23  Eng.  Law  and  Eq.  R.,  51, 83 

Elves  vs.  Crofts,  10  Com.  Bencli  R.,  241, 61 

Farina  vs.  Silverlock,  4  Kay  &  Johns.,  650, 229 

Fetridge  vs.  Wells,  4  Abb.  Pr.  R.,  144 ;  13  How.  Pr.  R.,  385,  .  36-151 

Fetridge  vs.  Merchant,  4  Abb.  R.,  136, 41-49-156 

Flavel  vs.  Harrison,  19  Eng.  Law  and  Eq.  R.,  15, 33 

Gout  vs.  Aleplogu,  6  Beav.,  69 ;  1  Chitty's  Gen.  Pr.,  701,  . .  120 

Hine  vs.  Lart,  10  Lond.  Jur.  R.,  n.  s.,  161, •. 82-122 

Hogg  vs.  Kirby,  2  Ves.,  226, - 93 

HoLLowAY  vs.  HoLLowAY,  12  Bcav.,  213, 32 

Howard  vs.  Henriques,  13  Sand.  S.  C.  R.,  325, 90 

Howe  vs.  Searing,  10  Abb.  Pr.  R.,  264, 55 

Hitchcock  vs.  Cohen,  1  Adol.  &  El.,  438, 61 

Knott  vs.  Morgan,  2  Keene,  213, 94 

Lewis  vs.  Langdon,  7  Simons,  421, 61 

Marsh  vs.  Billings,  7  Cush.,  322, 91 

McDonald  vs.  Richardson,  1  Geff.  R.,  81, 61 

MiLLiNGTON  vs.  Fox,  3  Myl.  &  Cr.,  338, 119 

Motley  vs.  Downman,  3  Myl.  &  Cr.,  1, '. 27 

Morrison  vs.  Salmon,  2  Man.  &  Gr.,  385, 119 

Partridge  vs.  Menck,  2  Sand.  Ch.  R.,  622, 218 

Partridge  vs.  Menck,  How.,  appeal  cases, 34 

Perry  vs.  Trufit,  6  Beav.,  66, 32-118-160 

Peterson  vs.  Humphrey,  4  Abb.  Pr.  R.,  394, 62 

Pierce  vs.  Franks,  10  Lond.  Jur.  R.,  25, 122 

Ridding  vs.  Howe,  8  Simons,  477, 31 

Ransome  vs.  Bentnall,  3  Law  Jour.  R.,  n.  s.,  161, 121 

RoDGERS  vs.  NowiLL,  5  Man.  Gr.  &  Sc,  109, 105 

Samuel  vs.  Burger,  4  Abb.  Pr.  R.,  88, 52 

Singleton  vs.  Bolton,  3  Doug.,  293, 24-116 

Snowden  vs.  Noah,  Hopkins,  347, 93 

Southern  vs.  How,  Popham,  144, 11 

Spottiswoode  vs.  Clark,  10  Lond.  Jur.  R.,  1043, 94-235 

Stern  vs.  Carlan,  13  Law  R.,  360, 234 

Stewart  vs.  Smithson,  1  Hilton,  119, 41 

Stokes  vs.  Laxdgraff,  17  Barb.,  608. 86-140 


LIST    OF   CASES.  7 

Page. 

Sykes  vs.  Sykes,  3  B.  &  C,  54, 103 

Taylor  vs.  Carpenter,  2  Sand.  Ch.  R,  Gil, 234 

Taylor  vs.  Carpenter,  '3  Story  K.,  450, 20 

Taylor  vs.  Carpenter,  2  Woodbury  &  Minot,  1, 20 

Taylor  vs.  Carpent'cr,  4  Barb.  Ab.  of  Chancellors'   Deci- 
sions, G8, 20 

The  Merrimack  Man.  Co.  vs.  Garner,  2  E.  D.  Smith,  387, . .  220 

TuE  Collins  Company  vs.  Cowen,  3  Kay  &  Johns.,  423, 21-26 

The  Collins  Company  vs.  Brown,  3  Kay  &  Johns.,  428, 21-122 

The  Brooklyn  White  Lead  Co.  vs.  Masury,  25  Barb.,  216, .  148 

Thomson  vs.  Winchester,  19  Pick.,  214, 109 

Welch  vs.  Knott,  4  Kay  &  Johns.,  747, 122-218 

Williams  vs.  Johnson,  1  Bosworth,  1, 161 

Williams  vs.  Wilson,  4  Sand.  Ch.  E.,  379, , 61 

Whittingham  vs.  Wooler,  2  Swanst,  428, 234 

Wolfe  vs.  Goulard,  18  How.  Pr.  E.,  64, 168 


THE 


LAW  or  TRADE  MARKS. 


CHAPTER  I. 


Of  the  Natuee  and  Charactee  op  Peopeety  in  Teadb 

Maeks. 

A  TRADE  MARK  IS  tliG  name,  s5mibol,  figure,  letter, 
form  or  device,  adopted  and  used,  by  a  manufac- 
turer, or  merchant,  in  order  to  designate  the  goods 
that  he  manufactures,  or  sells,  and  distinguish  them 
from  those  manufactured  or  sold  by  another ;  to 
the  end  that  they  may  be  Imown  in  the  market,  as 
his,  and  thus  enable  him  to  secure  such  profits  as 
result  from  a  reputation  for  supeiior  skill,  industry 
or  enterj^rise. 

The  necessity  for  the  use  of  such  distinguishing 
marks  for  articles  of  merchandise,  must  have  arisen 


10  THE   LAW    OF 

with,  the  dawn  of  manufacturing  and  mercantile 
competition. 

Such  is  the  similarity  in  external  appearance, 
upon  a  casual,  or  even  a  careful  inspection,  of  dif- 
ferent articles  of  manufacture,  of  the  same  general 
nature,  but  of  essentially  different  quality  and 
value,  that,  without  the  aid  of  distinguishing 
marks,  the  purchaser  would  be  unable  to  deter- 
mine the  origin  of  the  goods  he  was  purchasing, 
and  so  would  be  deprived  of  that  assm'ance  of  the 
quality  of  the  merchandise,  and  that  pledge  of  the 
integrity  of  the  manufacturer  or  vendor,  which  the 
trade  mark  expresses  or  implies. 

We  accordingly  find,  that  property  in  trade 
marks,  exclusive  and  absolute,  has  existed  and 
been  recognized  as  a  legal  possession,  which  may 
be  bought,  and  sold,  and  transmitted,  from  the 
earliest  days  of  our  recorded  jurisprudence. 

It  has  been  often  said,  that  the  doctrine  of  exclu- 
sive property  in  trade  marks,  has  prevailed  from  the 
time  of  the  Year  Books.  This  may  be  so — but 
on  an  examination  of  the  record  referred  to,  it  is 
very  doubtful  if  it  can  be  regarded  as  justifying 
this  ancient  recognition  of  the  doctrine.  The  reci- 
tal in  Cro.  Jac.  is  as  follows  : 

"A  clotliicr  of   Gloucestershire  made  very 
"good  cloth;  so  that,  in  London,  if  they  saw 


TRADE   MARKS.  11 

"any  cloth  of  his  mark,  they  would  buy  it, 
"  without  searching  thereof;  and  another,  who 
"  made  ill  cloth,  put  his  murk  upon  it,  without 
"his  privity — and  an  action  upon  the  case  was 
"  brought,  by  him  tcho  bought  the  doth,  for  this 
"deceit,  and  adjudged  maintainable." 

In  Southern  vs.  How,  Popham,  144,  a  somewhat 
different  version  is  given  of  what  is,  no  doubt,  the 
same  case — although  it  is  there  said  to  have  taken 
place  in  22  Eliz.,  and  in  Cro.  Jac,  it  is  referred  to 
the  33  Eliz. 

In  Comyn's  Digest  ^^  Act  ion  on  the  case  for  deceit " 
A.  g.  the  case  is  thus  recited  : 

"  So  "  ( i.  e.  an  action  will  lie)  "  if  a  clothier 
"  sell  bad  cloths  upon  which  he  put  the  mark 
'of  another  who  made  good  cloths." 

Comyn  does  not  say  hy  whom  the  action  may  be 
maintained,  but,  as  he  cites  Cro.  Jac.  only,  it  may 
be  inferred  that  he  considered  the  case  as  estab- 
lishing the  right  in  the  purchaser,  which  it  certainly 
would,  if  that  report  be  correct.  In  Southern  vs. 
How,  in  Popham,  the  case  is  certainly  cited  as  a 
distinct  affirmance  of  the  right  of  a  manufactm'er 
to  maintain  an  action  for  an  unauthorized  use  of 
his  trade  mark — Lord  Rolle,  however,  expressly 
states  that  "  Doderidge  did  not  say  whether  the 
action   was   brought  by  the   clothier   or  by  the 


12  THE   LAW    OF 

vendee,"  but  he  adds — '' semhle  que  gist  jjur  le 
vendee''— 2  Roll.,  28. 

At  whatever  early  date  property  in  trade  marks 
may  have  been  recognized,  it  is  only  since  a  com- 
paratively recent  period,  that  the  jurisdiction  of 
Coiu'ts  of  Equity  has  been  exercised  for  its  j)ro- 
tection.  And  it  is  only  since,  and  as  a  consequence 
of,  the  learned  discussions  and  decisions  in  these 
courts,  that  its  natui-e,  and  character,  and  extent, 
have  been  clearly  defined. 

Prior  to  the  time  of  Lord  Hardwicke,  a  party 
claiming  to  be  the  owner  of  a  trade  mark,  was  left 
to  establish  his  right,  and  obtain  his  remedy  at  law. 
That  learned  chancellor  said — that  he  "knew  of 
"  no  instance  of  granting  an  injunction  to  restrain 
"  one  trader  from  using  the  trade  mark  of  another." 
Blanchard  vs.  Hill,  2  Atk.,  284 — "  and"  he  adds — 
"  in  my  opinion  it  would  be  of  miscliievous  conse- 
"  quence  to  do  so." 

It  is  certain,  that  in  a  case  like  that  before  Lord 
Hakdwicke,  no  Court  of  Equity  of  the  present 
day,  either  in  England  or  America,  would  hesitate 
to  grant  an  injunction  to  restrain  the  violation  of 
rights  now  universally  conceded  to  be  just  and 
salutary. 

It  is  not  easy  to  understand  upon  what  grounds 
any  reasonable  apprehension  of  "  mischievous  con- 


TRADE  MAEKS.  13 

sequences,"  could  have  been  entertained,  from  such 
an  exercise  of  the  powers  of  a  Court  of  Equity — 
but  whatever  they  may  have  been,  they  have  long 
since  been  discarded. 

As  the  time  interests  of  manufactm-es  and  com- 
merce have  been  more  perfectly  developed,  and 
more  fully  understood  and  appreciated,  it  has  been 
found,  that  an  exclusive  property  in  trade  marks, 
and  its  adequate  protection  by  Courts  of  Equity, 
not  only  imposes  no  restraint  upon  the  freedom 
of  trade,  but  that  its  direct  and  inevitable  ten- 
dency is,  to  promote  and  encourage  that  laudable 
competition,  in  which  lies  the  true  interest  of 
the  public  —  that  competition  which  stimulates 
effort,  and  leads  to  excellence,  because  of  the 
certainty  of  protection  in  the  attainment  of  its 
adequate  reward. 

It  is  now,  therefore,  the  well  established  doctrine, 
that  the  exclusive  property  of  the  manufacturer,  or 
merchant,  in  his  trade  marks,  is  of  that  nature  and 
character,  that  its  adequate  security  and  protection, 
by  the  exercise  of  the  highest  power  of  the  cotirts, 
is  an  imperative  duty,  as  well  for  the  safety  of  the 
interests  of  the  public,  as  for  the  promotion  of 
individual  justice  —  and  a  duty  which  cannot  be 
evaded  or  denied,  without  a  violation  of  those 
principles  upon  which  a  large  portion  of  equity 


14  THE   LAW   OF 

jurisdiction  is  founded — and  its   most  important 
functions  are  exercised. 

When  we  come  to  consider  the  cliaracter  and 
extent  of  the  wrong  that  is  committed  by  an  inva- 
sion of  the  right  of  property  in  a  trade  mark,  the 
just  and  rational  grounds  upon  which  this  doctrine 
has  now  become  firmly  established,  will  be  made 
perfectly  apparent. 

The  right  of  property  in  trade  marks  does  not 
partake  in  any  degree  of  the  nature  and  character 
of  a  patent  or  copyright,  to  which  it  has  sometimes 
been  referred— nor  is  it  safe  to  reason  from  any 
supposed  analogies  existing  between  them. 

The  exclusive  right  of  multiplying  copies  of 
original  productions  of  the  mind,  whether  in  the 
form  of  books,  maps,  engravings,  designs  or  other 
of  the  manifold  emanations  of  human  thought, 
expressed  by  words  or  sjmibols — bears  no  appre- 
ciable resemblance  to  a  right  of  property  in  a  mere 
name,  figure,  letter,  mark,  device  or  symbol — 
when  used  as  a  designation  of  a  thing. 

The  former,  which  is  copyright  property,  is 
granted  by  express  statute — and,  whatever  may 
have  been  its  origin,  is  controlled  by  the  limitations 
and  conditions  of  the  law  of  its  being ;  it  is  a  pro- 
perty  in   the   thing    itself — the   words  —  letters, 


TRADE    MARKS.  15 

designs  or  syrabols,  which  are  the  signs  of  things, 
and  the  forms  and  cmbodmient  of  thought.  The 
latter  is  a  property,  not  in  the  words,  letters,  designs 
or  symbols,  as  things  —  as  signs  of  thought — as 
productions  of  mind — but,  simply  and  solely,  as 
a  means  of  designating  things — the  things  thus 
designated  being  productions  of  human  skill,  or 
industry,  whether  of  the  mind  or  the  hands,  or  a 
combination  of  both :  and  this  property  has  no 
existence  apart  from  the  thing  designated  —  or 
separable  from  its  actual  use,  in  accomplishing  the 
present  and  immediate  pui'pose  of  its  being.  It  is 
a  right  of  property,  neither  created  nor  controlled 
by  any  legislative  enactment,  but  existing  at 
common  law,  independent  of  all  statute  provi- 
sions, wliich,  [recognizing  its  existence  and  the 
great  importance  of  its  protection  beyond  that 
afforded  it  by  courts  of  civil  jurisdiction],  inflict 
the  penalties  of  a  misdemeanor  upon  its  viola- 
tion.* 

During  the  cuiTcnt  century,  which,  beyond  all 
others,  has  been  characterized  by  a  wonderfully 
increased  activity  in  the  multiplication  of  all  con- 
ceivable productions  to  supply  the  material  needs 
or  wants  of  man — natural  or  artificial  —  the  right 
of  propert}^  in  trade  marks,  has  grown  to  be  of 

*  Vide  note  at  the  end  of  this  chapter. 


16  THE   LAW    OF 

immense  and  incalculable  value  to  the  manufac- 
turer— the  merchant — and  the  public. 

It  is  the  mean«,  and  in  many  instances,  the  only 
means,  by  which  the  former  are  enabled  to  inspire 
and  retain  public  confidence  in  the  quality  and 
integrity  of  things  made  and  sold — and  thereby 
secure  for  them  a  peraianent  and  reliable  demand — 
which  is  the  life  of  manufacturing  and  mercantile 
operations. 

And  it  is  also,  in  the  like  instances,  the  only 
means,  by  which  the  public  is  protected  against  the 
frauds  and  impositions  of  the  crafty  and  designing, 
who  are  ever  on  the  alert  to  appropriate  to  them- 
selves the  fruits  of  the  well  earned  reputation  of 
others,  regardless  of  individual  rights  or  the  public 
interests. 

As  this  peculiar  character  of  property  has  in- 
creased in  value  and  estimation,  so,  it  has  become 
more  and  more  important,  that  the  principles  of 
law  should  be  clearly  defined  and  well  understood, 
which  lie  at  the  foundation  of  its  existence — which 
indicate  its  true  nature  and  character — which  pre- 
scribe rules  for  its  acquisition,  preservation  and 
transmission — and  which  define  its  violation,  and 
provide  the  means  for  its  protection,  as  well  in  the 
form  of  preventive,  as  of  retributive  justice. 

These  principles  are  to  be  gathered   from   the 


TRADE   MARKS.  17 

discussions  and  judicial  decisions  of  the  courts  of 
England  and  the  United  States,  and  the  ensuing 
chapters  of  this  work  will  be  devoted  to  the  task  of 
extracting  and  faithfully  setting  forth  those  princi- 
ples, w^hich  are  considered  justly  deducible  from  all 
the  authorities,  upon  their  careful  digest  and  review. 

Note. — The  peculiar  phraseology  of  the  Patent  Laws 
of  the  United  States  Avhich  grant  to  the  inventor  or  pro- 
ducer of  a  new  and  original  design  the  exclusive  right  of 
multiplying  copies  of  the  same,  have,  to  some  extent,  led 
to  the  practice,  of  availing  of  its  provisions  to  secure  what 
is  supposed  to  be  an  equivalent  to  trade  mark  property. 

The  act  of  18-12,  is  in  the  following  words: 

"  Any  citizen  or  citizens,  alien  or  aliens,  having  resided  one 
"year  in  the  United  States,  and  taken  the  oath  of  his  or  their 
"  intention  to  become  a  citizen  or  citizens,  who  by  his,  her, 
"or  their,  own  industry,  genius,  efforts,  and  expense,  may 
"  have  invented  or  produced  any  new  and  original  design  for 
"  a  manufacture,  whether  of  metal  or  other  material  or  mate- 
"  rials ;  or  any  new  and  original  design  for  the  printing  of 
"woolen,  silk,  cotton  or  other  fabrics ;  or  any  new  and  original 
"design  for  a  bust,  statue  or  bas  relief,  or  composition  in 
"  alto  or  basso  relievo,  or  any  new  and  original  impression  or 
"  ornament ;  or  to  be  placed  on  any  article  of  manufacture, 
"  the  same  being  formed  in  marble  or  other  material  —  or  any 
"  new  and  iiseful  pattern,  or  print  or  picture,  to  be  either 
^^  worked  into  or  worked  on,  ov  printed  ov  painted  or  cast,  or 
'^  otJierivise  fixed  on  any  article  of  manufacture — or  any  new 
"  and  original  shape  or  configuration  of  any  article  of  manu- 
"  facture,  not  known  or  used  by  others,  before  his,  her  or  their 
"  invention  or  production  thereof,  and  prior  to  the  time  of 
"  his,  her  or  their  application  for  a  patent  therefor,  and  who 
"  shall  desire  to  obtain  an  exclusive  right  or  property  tlierein, 
"  to  make,  use  and  sell  and  vend  the  same,  or  copies  of  the 
"  same  to  others  by  them  to  be  made,  used  and  sold,  may 
3 


18  THE   LAW   OF 

"  make  application,  in  Avriting,  to  the  commissioner  of  Patents, 
"  expressing  such  desire,  and  the  commissioner,  on  due  pro- 
"  ceeding  had,  may  grant  a  patent  therefor," 

The  words  whicli  we  have  italicised,  are  those  relied 
upon,  in  this  law,  as  conferring  a  right,  available  for 
obtaining,  by  patent,  an  exclusive  privilege  that  can  be 
made  to  serve  the  purpose  of  designating  articles  of  mer- 
chandise. 

It  is  quite  obvious  that  such  was  not  the  purpose  of  the 
law,  but,  on  the  contrar}^,  it  was  manifestly  intended,  that 
the  design^  for  which  such  protection  was  provided — ^should 
constitute  a  portion  of  the  nianuf  ictured  article,  either  as 
an  ornamental  adjunct,  or  as  controlling  its  figure  or  pro- 
portions—  by  no  means,  as  a  mere  name  or  designation, 
by  which  to  identify  or  distinguish  the  article. 

But,  we  are  informed  that  a  very  literal  construction  has 
been  placed  upon  the  phraseology  of  the  law  —  and  that 
under  it,  patents  are  granted,  upon  the  application  of 
manufactures  or  merchants  —  for  devices  to  be  used  as 
mere  designations  of  their  merchandise,  to  be  affixed,  either 
to  the  article  itself —  or  to  the  package  containing  it. 

Whatever  right  may  be  thus  acquired,  is,  of  course, 
subject  to  the  conditions  of  the  statute  —  and,  although 
made  subservient  to  the  uses  of  designating  trade  marks  — 
is,  in  no  sense,  analogous  to  trade  mark  property. 

No  higher  or  better  exclusive  right  to  the  use  of  such 
mark  or  device  can  be  acquired  by  such  a  patent  —  than 
may  be  acquired  by  its  adoption  and  appropriation  by  the 
manufacturer  or  merchant  to  designate  the  articles  to 
which  it  is  affixed,  as  his  production  —  and  it  may  well  be 
doubted  whether  such  a  construction  of  the  statute  would 
have  been  suggested  or  sought  —  but  for  the  privilege, 
which  such  a  government  grant  confers,  or  may  be  sup- 
posed to  confer,  of  affixing  the  word  "patent"  or  "pat- 
tented  "  to  the  article,  in  connection  with  which,  the  right 


TRADE   MARKS,  19 

to  a  design  has  been  secured  —  and  this,  to  serve  the  purpose 
of  inducing  the  public  to  believe  that  a  patent  exists  for  the 
thing  itself —  not  for  the  mere  device  or  mark  attached  to  it. 
The  policy  of  continuing  such  an  unwarrantable  con- 
struction of  the  law  —  resorted  to  for  the  accomplishment 
of  such  a  purpose  —  is,  to  say  the  least,  very  questionable. 


CHAPTER  II. 

By  whom  Property  ix  Trade  Marks  may  be  acquired. 

No  person,  who  is,  in  law,  capable  of  acquiring 
and  possessing  any  species  of  property,  is  excluded 
from  the  acquisition  of  property  in  trade  marks. 

In  its  adequate  protection  by  the  com'ts,  there  is 
no  difference  between  citizens  and  aliens — nor,  can 
it  be  made  a  subject  of  inquiry,  how  far  the  comis 
of  the  country  of  the  alien  complainant,  afford  to  the 
citizens  of  the  country  of  his  temporary  domicil, 
that  protection  which  he  there  seeks.  Such  an 
inquiry,  it  has  been  truly  said,  would  be  deroga- 
tory^ to  the  dignity  of  the  courts  and  the  country, 
and  of  the  just  boast  of  all  free  and  enlightened 
communities,  that  equal  and  exact  justice  is  admin- 


20  ■  THE    LAW    OP 

istered  to  all  who  invoke  it.  The  honor  of  a 
nation,  and  the  character  of  its  jurisprudence,  as 
well  as  every  dictate  of  enlightened  wisdom,  espe- 
cially in  a  commercial  community,  require  that  the 
foreigner  shall  be  protected  in  this  character  of 
property,  equally  with  the  citizen.  Even  though 
other  nations  were  justly  chargeable  with  the 
wi-ong  and  injustice  of  "withholding  this  protection 
to  aliens,  it  affords  no  reason  for  an  imitation  of 
such  an  example. 

"  Retaliation  in  a  course  of  injustice,  is  not 
"  a  sakitary  principle  to  enforce,  in  the  admin- 
"istration  of  justice."  {Taylor  vs.  Carpenter^ 
3  Story's  Reports,  450,  and  imperfectly  reported 
in  7  Law  Reporter,  437  —  also  Taylor  vs.  Car- 
penter^ in  2  Woodbury  and  Minot,  1 — and  4 
Barbour's  Abstract  of  Chancellor's  decisions, 
68— and  fully  reported  in  2  Sand.  Ch.  R.,  603.) 

In  each  of  these  cases — the  former,  in  the  Cir- 
cuit Coiu't  of  the  United  States,  in  Massachusetts, 
before  Justices  Story  and  AVoodbury — and  the 
latter,  in  the  Court  of  Chancery  of  New  York, 
and  subsequently  on  appeal  in  the  Court  of  Errors 
— the  plaintiff  was  a  subject  of  the  Queen  of  Great 
Britain — and  an  attempt  was  made  by  the  defend- 
ant's counsel,  to  show,  that  the  protection  claimed, 
should  be  granted  only  to  citizens,  and  that  the 
policy  of  denying  such  protection  to  the  foreigner 


TRADE   MARKS.  21 

complainant,  a  citizen  of-  the  United  States,  had 
been  adopted  by  the  EngHsh  courts. 

In  the  refusal  of  the  courts,  in  these  cases,  to 
recognize  such  a  doctrine,  it  was  by  no  means  con- 
ceded, that  the  case  cited  and  relied  upon  by  the 
defendant's  counsel,  justified  the  deduction  di'awn 
from  it. 

The  case  referred  to,  is  Delondre  et  al.  vs.  Shaio^ 

2  Simons,  237,  and  it  will  be  found,  on  examina- 
tion, that  the  denial  of  protection  by  the  learned 
Vice-Chancellor,  was  limited  to  the  "  copyright  of 
a  foreigner." 

More  recently,  and  in  one  of  the  latest  deci- 
sions of  the  English  Com*t  of  Chancery,  the  very 
question  arose  which  was  made  in  Taylor  vs.  Car- 
penter. 

In  the  case  of  The  Collins  Co.  vs.  Broicn,  3  Kay 
and  Johnson,  423  —  and  The  Collins  Co.  vs.  Cowen, 

3  Kay  and  Johns.,  428,  tlie  plaintiffs  were  citizens  of 
the  United  States,  and  manufacturers  of  edge  tools 
at  Hartford,  in  Connecticut.  Upon  the  objection 
of  alienage  being  made,  the  doctrine  supposed  to 
have  been  adopted  in  Delondre  vs.  Shaw^  was  repu 
diated  by  the  learned  Vice-Chancellor  ("VYood), 
in  language  quite  as  strong  and  indignant  as  that 
used  by  Mr.  Justice  Story- — or  the  Chancellor  or 
either  of  the  learned   Senators  in  the  Court  of 


22  THE    LAW    OF 

EiTors  of  New  York — and  it  was  not  only  held 
that  foreigners  were  equally  entitled  to  protection 
with  citizens,  but  that  it  was  very  doubtful  if  it 
should  be  withheld  even  from  alien  enemies. 

A  consideration  of  the  correct  legal  definition  of 
a  trade  mark — of  the  necessity  in  which  its  use 
originated,  and  of  the  justice  as  well  as  policy  of 
protecting  it  as  property,  serves  to  indicate  that 
class  of  persons  in  a  mercantile  community  who 
become  possessed  of  this  species  of  property  and 
entitled  to  protection  in  its  enjoyment — for,  while, 
as  we  have  seen,  no  one  is  excluded  from  the  right 
to  acquhe,  on  the  other  hand,  such  only  do  acquire 
the  right,  whose  position  brings  them  within  the 
true  policy  and  just  intendment  of  the  law. 

It  is  not  the  abstract  right  to  the  exclusive  use 
of  a  certain  name,  letters,  mark,  device  or  symbols, 
which  can  be  acquired  and  possessed. 

It  is  such  use  only,  in  connection  with,  and  as  a 
designation  of,  the  particular  property  to  which  it 
is  affixed.  It  follows,  therefore,  that  the  exclusive 
right  to  the  trade  mark,  can  exist  in  him  only,  who, 
in  some  form,  and  to  some  extent,  possesses  an 
exclusive  right  in  the  property  to  which  it  is 
appended. 

The  fundamental  policy  of  the  law  is,  to  pro- 
tect the  manufactm^er,  who  by  his  skill  and  industry, 


TRADE   MARKS.  23 

has  produced  an  article  of  merchandise,  that  has 
found  favor  with  the  ^^uhhc,  and  which  he  has 
designated  by  a  particular  name  or  mark.  We 
accordingly  find,  that  in  nearly  all  the  reported 
cases  in  w^iich  the  right  has  been  recognized,  the 
complainants  have  been  manufacturers,  and,  as 
such,  possessed  of  an  exclusive  right  in  the  desig- 
nated commodity. 

It  is  not  doubted  that  the  merchant,  who  imports 
and  sells  the  article,  may  acquire  the  light,  and  be 
alike  entitled  to  protection — but  he  must  acquire 
it  by  virtue  of  his  relationship  to  the  manufacturer, 
which  has  vested  in  him  an  exclusive  right  to  sell. 

If  A.,  the  manufacturer,  should  sell  his  produc- 
tions to  B.,  and  also  to  C,  and  B.  should  adopt  for 
it  a  distinguishing  mark,  indicating  its  origin,  it 
would  hardly  be  contended  that  he  could  acquire 
an  exclusive  property  in  such  mark,  and  be  entitled 
to  its  protection,  as  against  E.,  or  any  one  else,  who 
had  an  equal  right  to  sell  the  identical  article,  by 
■virtue  of  his  purchase  from  the  same  manufacturer. 

It  seems,  therefore,  to  be  the  established  doctrine, 
that  property  in  trade  marks  —  so  far,  at  least,  as 
they  consist  in  the  proper  name  of  the  things 
designated,  or,  by  long  use,  have  become  known 
by  that  name,  can  exist  only  in  those  who  have  the 
\  exclusiveright  to  manufacture  0£^to  sell  the  spe- 


24  THE   LAW   OF 

cific  article.  And  so  far  as  they  consist  in  anything 
other  than  the  proper  name  of  the  thing,  whicii  is 
susceptible  of  becoming  a  legitimate  trade  mark, 
can  exist  only  in  the  manufacturer  or  in  those 
entitled  to  represent  the  manufacturer. 

In  the  case  of  Singleton  vs.  Bolton,  3  Doug.,  393, 
which  is  one  of  the  earliest  reported  cases  in  the  law 
of  trade  marks,  it  appeared  that  one  "  Dr.  Johnson," 
had  invented  a  certain  medicine  which  he  called 
"  Dr.  Johnson's  Yellow  Ointment."  By  long  use, 
that  had  become  the  name,  by  which  alone  the 
medicine  was  known. 

Without  acquiring  any  rights  from  the  inventor, 
who  had  long  been  deceased,  the  plaintiff,  and  his 
father  before  him,  had,  for  many  years,  com- 
pounded and  sold  this  medicine,  under  that  name. 

The  defendant  commenced  to  make  and  sell  the 
same  ointment,  under  the  same  name,  and  for  such 
supposed  invasion  of  his  exclusive  right,  the  plain- 
tiff brought  his  action.  He  was  nonsuited,  and 
the  nonsuit  was  affirmed  by  the  Coui-t  of  King's 
Bench,  upon  the  ground,  as  stated  by  Lord  Mans- 
field, that  the  plaintiff  had  no  exclusive  right  in 
the  medicine  itself — and  therefore,  the  defendant 
had  an  equal  right  to  prepare  and  sell  it  under  the 
same  name  that  the  plaintiff  used — that,  having 
become  the  proper  name  of  the  thing. 


TRADE   MARKS.  25 

In  the  case  of  Canham  vs.  Jones,  2  Yes.  &  Beams, 
218,  the  same  principle  was  asserted. 

The  bill  was  filed  to  restrain  the  defendant  from 
compomiding  and  selling  a  certain  medicine,  called 
"  Velno's  Vegetable  Sp'up,"  the  plaintiff  averring 
that  he  had  acquired  an  exclusive  right  in  the 
medicine  itself,  and  therefore  in  the  use  of  the 
name  under  which  it  was  known  and  sold. 

The  evidence,  however,  not  sustaining  the  aver- 
ment of  the  plaintiff's  exclusive  right  in  the  medi- 
cine, his  alleged  right  to  protection  in  the  use  of 
tlie  name,  was  urged  upon  the  ground  of  prior 
adoption  and  long  use — but  the  bill  was  dismissed, 
"because,"  in  the  language  of  the  learned  Vice- 
Chancellor  (Sir  Thomas  Plumer),  "as  the  plaintiff 
had  no  exclusive  right  in  the  medicine,  it  was  a 
necessary  consequence  that  he  could  have  none  in 
the  use  of  its  name.  The  foundation  of  the  bill,  is 
the  exclusive  right  asserted  in  the  plaintiff — that 
failing — all  consequential  relief  falls  with  it." 

This  is,  unquestionably,  the  established  doctrine — 
and  although,  in  the  discussion  of  particular  cases, 
judges  have  sometimes  held  language  which  would 
seem  to  convey  the  idea  of  a  property  in  the  trade 
mark  itself — not  connected  with  any  merchandise 
that  it  designates,  a  property  which,  once  acquired, 
becomes  vested  in  him  who  adopts  it,  so  that  he 


26  THE   LAW   OF 

may,  for  any  time,  lay  it  aside,  and  then  resume 
its  use  as  an  exclusive  right  —  such  a  doctrine  has 
never  been  du-ectly  asserted,  nor  could  it  be  main- 
tained, without  a  departure  from  the  obvious  pur- 
pose and  policy  of  the  law. 

In  the  late  case,  already  cited  (  Collins  vs.  Cowen, 
3  Kay  and  Johns.,  428),  the  learned  Vice-Chan- 
cellor  declares  it  to  be  well  settled,  that  there  is  no 
such  thing  as  property  in  a  trade  mark,  except  in 
connection  with  its  use  to  identify  the  goods  and 
wares  as  those  of  the  manufactm-er  who  uses  it. 

"It  is,"  lie  says,  "in  fact,  a  right,  which,  can 
"be  said  to  exist  only,  and  can  be  tested  only, 
"by  its  violation.  It  is  a  right  which  any  per- 
"son  designating  his  wares  or  commodities  by 
"a  particular  trade  mark,  as  it  is  called,  has, 
"to  prevent  others  from  selling  wares  which 
"  are  not  his,  marked  with  that  trade  mark." 

While,  therefore,  it  may  be  perfectly  tnie,  that 
a  trade  mark  may  be  made  the  subject  of  sale  and 
transfer,  so  as  to  confer  upon  the  purchaser  the 
i-ights  of  the  vendor — yet,  it  must  not  be  supposed 
that  this  can  be  done,  apart  from  a  transfer  of  the 
right  to  manufacture  or  sell  the  particular  mer- 
chandise, which  it  had  been  used,  by  the  vendor, 
to  designate. 

If  a  manufacturer,  who  has  adopted  and  used  a 
particular  mark  or  sjmibol  to  designate  his  goods, 


TRADE   MARKS.  27 

and  thereby  has  acquired  a  right  to  protection  in 
its  exclusive  use,  should  abandon  his  business,  with- 
out transfen-ing  it  to  another,  he  can  no  longer  be 
held  to  possess  any  exclusive  right  to  the  use  of 
the  name,  entitling  him  to  transfer  it  to  another 
manufactm'er  who  makes  the  same  or  a  similar 
article. 

The  right  to  the  exclusive  use  of  the  name,  may, 
perhaps,  upon  such  abandonment,  be  acquired  by 
another,  by  adoption  and  use — but  the  transfer, 
of  itself,  can  confer  no  right. 

It  would  seem,  that  a  trade  mark  may  become  so 
identified  with  the  particular  ^^/^-ce  of  manufactm'e, 
as  to  confer  upon  the  person,  having,  for  the  time 
being,  tile  exclusive  right  to  manufactm-e  at  that 
particular  place,  the  exclusive  right  to  use  the  trade 
mark  upon  his  goods  there  manufactured. 

Such  a  doctrine  was  suggested  by  Lord  Cotten- 
HAM,  in  Motley  vs.  Donmman,  3  Myln.  &  Cr.,  1. 

In  that  case,  tin  plates  were  made  at  Carmarthen, 
for  a  long  series  of  years,  marked  "  M.  C,"  and, 
under  that  mark,  became  universally  known  as  the 
plates  made  at  the  Carmarthen  works.  S.  became 
a  lessee  of  the  factory,  and  used  the  mark.  He 
abandoned  his  lease,  and  set  up  a  tin  plate  factory 
forty  miles  distant  from  Carmarthen,  and  there 
used  the  same  mark  upon  his  plates.     For  a  num- 


28  THE   LAW   OF 

her  of  years  thereafter  the  Cannarthen  works 
remained  unoccupied.  At  length  D.  took  a  lease 
of  them,  and  commenced  the  business  of  manufac- 
turing tin  plates,  and  used  the  same  brand  "  M.  C." 
S.  obtained  an  injunction  to  restrain  D.  in  the  use 
of  this  trade  mark — but,  upon  the  hearing,  it  was 
dissolved,  with  liberty  to  bring  an  action  at  law. 
The  learned  Chancellor  says: 

"The  question  is,  whether  the  plaintiff 
"acquired  the  right  to  prevent  subsequent  ten- 
"ants  of  the  works  at  Carmarthen,  from  using  a 
"mark,  which  it  is  clear,  was  originally  derived 
"from  those  works.  It  is  a  question  of  con- 
"siderable  nicet}^  and  has  never  risen  in  any 
"of  the  cases  cited,  and  therefore,  the  court 
"  should  be  very  sure  before  it  concludes  the 
"right,  by  injunction  —  particularly  without 
"  providing  for  the  trial  of  the  legal  right." 

It  may  well  be  doubted,  whether  the  doctiine, 
apparently  countenanced  by  this  decision,  would 
be  sustained  upon  matui'e  consideration — for  it 
would  certainly  appear  to  be  at  variance  with  the 
principles  upon  which  the  jmisdiction  in  equity, 
for  the  protection  of  property  in  trade  marks,  has 
always  been  held  to  rest. 

That  jurisdiction  is  exercised  for  a  twofold  pur- 
pose: 

First.  To  protect  the  public  against  the  frauds 
and  impositions  of  unprincipled  vendors,  who  may 


TRADE   MARKS.  29 

seek  to  pass  off  tlieir  spurious  wares,  as  those  of 
approved  quality  and  established  reputation,  under 
the  name  or  g-uise  of  the  genuine  commodity;  and 

Second.  To  secure  to  the  skilful  and  industrious 
manufacturer,  the  legitimate  fruits  of  his  skill  and 
industry. 

To  hold,  that  a  particular  trade  mark,  may, 
under  any  circumstances,  be  an  appurtenant  to  a 
particular  place,  where  the  goods  marked  are  made, 
could  scarcely  be  rendered  subservient  to  either 
purpose. 

To  hold  that  an  honest,  skilful  and  industrious 
manufacturer,  who  has  adopted  as  his  trade  mark, 
a  name  or  sign,  that  had  been  used  by  him  at  his 
former  place  of  manufacture,  at  a  time  when  all 
manufactvu'ing  operations  had  ceased  at  that  place, 
and  has  continued  the  use  of  that  name  or  sign  for 
a  series  of  years  —  so  that,  under  that  name,  the 
article  became  known,  and  favorably  known,  as 
his — maybe  suddenly  deprived  of  his  trade  mark, 
by  which  alone  his  merchandise  is  identified  in  the 
market,  and  the  exclusive  light  to  its  use  become 
vested  in  another,  because  that  other  has  become 
the  lessee  of  the  old  place  of  manufacture,  at  which 
the  trade  mark  was  originally  adopted,  and  long 
before  used — would  certainly  seem  to  be  subver- 
sive of  each  purpose  of  the  law — for  the  manu- 


30  THE    LAW    OF 

facturer,  would  thereby  be  effectually  deprived  of 
the  just  reward  of  liis  skill  and  industry — and 
another  party  '  sailing-  under  his  colors  '  would  be 
placed  in  a  situation,  enabling  him,  with  impunity, 
to  mislead  the  public,  and  pass  off  an  inferior 
article  upon  the  consumer. 

There  is  manifest  danger,  if  not  positive  cer- 
tainty, of  such  a  result,  whenever  the  judicial 
mind,  in  the  detenuination  of  controversies  con- 
cerning this  peculiar  character  of  property — is 
induced,  by  the  nature  of  the  circumstances  attend- 
ing  any  given  case,  or  from  any  other  cause,  to 
lose  sight,  for  a  moment,  of  those  fundamental 
principles,  which,  we  have  seen,  are  the  sufficient 
and  only  foundation  of  that  equity,  jurisdiction, 
which  is  exercised  for  its  protection. 

As  it  is  the  supposed  skill  and  industry  of  the 
manufacturer,  which  confers  upon  him,  or  those 
representing  him,  the  right  to  protection  in  the 
exclusive  use  of  the  trade  mark  which  he  has 
adopted,  to  designate  his  productions — such  a  right 
can  only  be  acquired  by  the  honest  manufacturer. 

When  a  person  seeks,  by  representations  which 
are  untrue  (whether  forming  a  portion  of  the  trade 
mark  that  he  has  adopted  for  his  wares,  or  not),  to 
mislead  the  public  into  a  belief  that  his  commodi- 


TRADE   MAEKS.  31 

ties  liave  an  origin  otlier  than  the  true  one,  or  that 
they  are  compounded  or  produced,  in  a  manner 
not  in  accordance  Avith  the  truth,  and  thus,  endea- 
vors to  estabhsh  a  reputation  for  his  goods,  upon 
another  basis  than  his  skill  and  industry  in  their 
production,  he  places  himself  beyond  the  pale  of 
the  protection  of  the  law  —  and  —  acquiring  no 
exclusive  right  to  the  trade  mark  that  he  uses,  is 
entitled  to  no  relief  against  any  one  who  may  see 
fit  to  appropriate  it. 

A  careful  review  of  the  authorities  illustrating 
this  important  doctrine,  cannot  fail  to  be  instruc- 
tive. 

In  the  case  of  Pidding  vs.  How,  8  Simons,  477, 
the  complainant  filed  his  bill,  to  restrain  the  use 
by  the  defendant,  of  his  trade  mark,  on  a  certain 
tea — made  by  a  peculiar  mixture  of  different  kinds 
and  qualities,  called  "  Howqua's  Mixture." 

It  appeared,  however,  that  the  complainant  had 
made  false  representations  to  the  public,  in  relation 
to  the  method  of  procming  and  making  his  mix- 
ture, and  upon  this  ground,  the  injunction  was 
denied. 

"It  is  a  clear  rule"  says  the  Yice-Chancellor 
in  his  decision  —  "laid  down  by  courts  of 
"equity,  not  to  extend  their  protection  to  per- 
"sons  whose  case  is  not  founded  in  truth." 


32  THE   LAW   OF 

In  Perry  vs.  Trufitt,  6  Bea.,  QQ,  the  doctrine  of 
Picldlng  vs.  Hoio,  was  approved  and  followed. 

It  appeared,  in  this  case,  that  in  1836,  one 
Leathart  invented  a  certain  mixtui'e  for  the  hair, 
and  sold  the  secret  and  recipe  for  his  compound 
to  the  complainant  Perry — who  called  it  "PeiTj's 
Medicated  Mexican  Balm." 

But  it  also  appeared,  that  the  complainant,  in  his 
advertisements  to  the  public,  had  falsely  set  forth 
that  his  compound  was  prepared  from  an  original 
receipt  of  the  leai-ned  and  distinguished  "  Von 
Blumenback"  —  and  for  this  reason,  with  others, 
(to  be  refeiTcd  to  hereafter  in  another  connection) 
Lord  Langdale,  Master  of  the  Rolls,  denied  the 
injunction  prayed  for,  to  restrain  the  defendant 
from  selling  his  compound,  under  the  name  of 
"  Trufitt's  Medicated  Mexican  Balm." 

Tlie  decision  in  the  subsequent  case  of  Holloway 
vs.  Holloway,  13  Bea.,  213,  would  seem  to  involve 
a  relaxation  of  this  salutary  doctrine — but,  as  no 
reference  is  made  in  the  opinion  of  the  court,  to 
either  of  the  preceding  cases,  it  cannot  be  regarded 
as  overruling  the  doctrine  which  they  had  estab- 
lished. 


TRADE    MARKS.  33 

In  Flavel  vs.  Harrison,  19  Eng.  Law  and  Eq. 
Rep.,  15 — the  doctrine  of  Fielding  vs.  How,  was 
again  maintained  and  rigidly  enforced. 

The  plaintiff  in  this  case,  had  contrived  a  grate, 
which  he  manufactured  and  sold  extensively,  and 
profitably,  under  the  name  of  "  Flavel's  Patent 
Kitchener."  It  was  thus  stamped  and  marked,  and 
by  that  name  had  become  known.  In  fact,  the 
plaintiff  had  never  obtained  any  patent  for  his 
invention  or  improvement.  The  name,  therefore, 
adoj)ted  by  the  plaintiff,  declared  an  untruth. 

The  defendant,  Harrison,  had  been  employed  by 
the  plaintiff,  and,  availing  of  his  situation,  had  sur- 
reptitiously procured  copies  of  the  plaintiff's  list  ot 
customers,  and  of  his  plans.  Leaving  his  employ- 
ment, he  commenced  lousiness  on  his  own  account, 
by  the  manufacture  and  sale  of  the  same  article, 
and  stamped  it  with  the  identical  name  used  by 
the  plaintiff. 

Notwithstanding  the  dishonest  practices  of  the 
defendant,  the  court  refused  to  interfere  by  injunc- 
tion, solely  upon  the  ground  that  the  plaintiff  had 
himself  been  guilty  of  a  fraudulent  misrepresenta- 
tion, in  the  trade  mark  adopted  by  him,  namely, 
that  the  thing  to  which  it  was  applied,  had  been 
patented,  when  in  truth  it  had  not. 


34  THE    LAW    OF 

(It  may  be  well  to  state,  in  this  connection,  that 
the  use  of  the  word  "patent,"  or  words  signifying 
that  letters  patent  of  the  government  have  been 
granted,  or  that  a  copyright  has  been  secm'ed  by 
compliance  with  the  statute  provisions,  by  stamp- 
ing, or  in  any  manner  marking  or  printing  the  same, 
upon  any  article  of  manufacture,  or  upon  anything 
which  is  the  subject  of  copyright — to  which,  in  truth, 
no  patent  has  been  granted  or  copyright  secured — 
is  prohibited  by  penal  enactments,  both  in  England 
and  the  United  States.  But  the  decision  in  Flavel 
vs.  Harrison  proceeds  upon  the  false  representation 
alone,  not  upon  the  statute  prohibition.) 

In  the  courts  of  the  United  States,  the  question 
of  the  right  of  a  complainant  to  protection,  in  the 
exclusive  use  of  his  trade  mark,  who  has  himself 
been  guilty  of  a  fraudulent  imposition  upon  the 
public,  in  the  manufacture  or  business  for  which  he 
seeks  protection,  has  undergone  elaborate  dis- 
cussion. 

The  subject  came  directly  under  consideration 
in  the  case  of  Patridge  vs.  Menck,  in  the  Court  of 
Appeals  of  New  York.    (How.  Appeal  Cases,  547.) 

In  the  Court  of  Chancery,  from  which  the  case 
was  taken  by  appeal,  the  question  does  not  seem 
to  have  arisen — 2  Sand.  Ch.  R.,  622 — but  in  the 


TRADE    MARKS.  35 

Court  of  Appeals,  the  case  was  determined  upon 
an  application  of  the  English  doctrine. 

The  plaintiff  was  a  manufacturer  of  friction 
matches,  and  caused  a  label  to  be  affixed  to  his 
boxes,  having  upon  it  the  woi-ds,  "A.  Golsh's  Fric- 
tion Matches." 

The  defendant  was  also  a  match  manufacturer, 
and  used  the  same  trade  mark  upon  the  labels 
affixed  to  his  boxes. 

A.  Golsh,  it  appeared,  was  the  original  manufac- 
turer, but  the  plaintiff  had  acquired  no  exclusive 
right  to  use  his  name  or  trade  mark,  although  he 
had  purchased  his  secret,  and  therefore  might  be 
regarded  as  licensed  in  some  manner,  to  use  his 
name.  The  court,  however,  considered  that  by  its 
use,  he  was  fraudulently  representing  to  the  public 
that  Golsli  was  the  manufacturer  of  the  matches 
made  and  sold  by  him  —  and  this  manifest  intention 
to  mislead  or  deceive  the  public,  was  held  to  be,  of 
itself,  a  sufficient  reason  for  denying  to  the  plaintiff 
the  protection  which  he  claimed, 

Mr.  Justice  Gardiner,  in  his  opinion  upon  this 
point,  briefly  and  significantly  says : 

"The  privilege  of  deceiving  the  public  even 
"  for  their  own  benefit,  is  not  a  legitimate  sub- 
"ject  of  commerce  —  and,  at  all  events,  if  the 
"maxim,  that  he  who  asks  equity  must  come 


36  THE    LAW   OF 

"  with  pure  bands,  is  not  altogether  obsolete, 
"  the  complainant  has  no  right  to  invoke  the 
"  extraordinary  jurisdiction  of  a  court  of  equity 
"  in  favor  of  such  a  monopoly." 

In  the  case  of  Fetridge  vs.  Wells,  4  Abb.  Pr.  R., 
144  —  this  doctrine  was  ably  and  most  elaborately 
discussed  by  the  late  Chief  Justice  Duer,  in  the 
Superior  Coui't  of  the  city  of  New  York. 

The  great  importance  of  the  principle,  as  impos- 
ing the  condition  of  truthfulness  and  integrity  in 
the  manufacturer,  as  a  sine  qua  non  to  his  right  to 
protection  in  the  trade  marks  for  his  merchandise, 
as  well  as  the  very  thorough  and  instructive  man- 
ner in  which  it  is  elucidated  by  this  learned  judge 
— which  will  be  found  to  be  characteristic  of  his 
disquisitions  upon  every  branch  of  the  law  of  trade 
marks  that  he  had  occasion  to  consider — requires 
something  more  than  a  mere  passing  notice,  or 
brief  statement  of  the  conclusions  of  the  court  in 
this  case. 

The  plaintiff,  it  appeared,  had  purchased  a  recipe 
for  compounding  a  certain  cosmetic,  which  he  had 
long  used,  under  the  name  of  "  The  Balm  of  a 
Thousand  Flowers." 

The  defendants  commenced  the  manufacture  and 
sale  of  a  similar  article,  which  they  designated, 
"  The  Balm  of  Ten  Thousand  Flowers." 


TRADE    MARKS.  <J7 

The  plaintiff  claimed  property  in  the  name  used 
by  him  as  his  trade  mark — and  brought  suit  for 
protection,  by  injunction,  against  the  alleged  viola- 
tion of  his  right  by  the  defendant. 

A  temporary  injunction  was  granted  by  a  judge 
of  the  coui't,  at  Chambers,  and  the  cause  came 
before  Mr.  Justice  Duer,  on  a  motion  to  dissolve 
the  injunction,  upon  the  pleadings  and  proofs. 

Several  questions  were  involved  in  the  case,  and 
are  discussed  at  much  length  and  with  great  learn- 
ing and  ability.  These,  we  shall  have  occasion  to 
notice  hereafter,  when  reviewing  the  authorities 
upon  another  branch  of  the  subject.  Upon  the 
doctrine  now  under  consideration,  the  result  of  the 
facts  in  proof  in  the  case,  is  thus  stated  by  the 
court : 

"  The  proof  is'  complete  that  the  name  was 
"given,  and  is  used,  to  deceive  the  public — to 
"  attract  and  impose  upon  purchasers  —  that,  in 
"  the  sense  that  the  plaintiff  means  it  shall  con- 
"  vey,  it  is  a  representation  to  the  public,  that 
"  he  finds  to  be  useful,  and  knows  to  be  false. 

"  Let  it  not  be  said  that  it  is  of  little  conse- 
"  quence  whether  this  representation  be  true 
"  or  false. 

"No  representation  can  be  more  material, 
"  than  that  of  the  ingredients  of  a  compound, 
"  which  is  recommended  and  sold  as  a  medicine. 
"  There  is  none  that  is  so  likely  to  induce  con- 
"fidence  in  the  approbation  and  use  of  the 


S8  THE  LAW   OF 

"compound,  and  none  that,  when  false,  will, 
"more  probably,  be  attended  with  injurious, 
"and  perhaps,  fatal  consequences.  Nor  is  it 
"  possible  to  excuse  or  palliate  the  proceedings 
"  of  the  plaintiff  by  saying  that  there  is  no  rea- 
"  son  to  believe  that  the  deception  which  he 
"  has  practised,  has  been  successful — for  that 
"  it  has  been  eminently  successful,  I  cannot 
"  doubt.  Of  the  extent  to  which  the  public 
"  has  been  deceived,  the  immense  sales,  which, 
"  it  is  stated,  have  been  made,  the  value  which 
"  the  plaintiff  attaches  to  the  name,  "  Balm  of 
"  a  Thousand  Flowers" — and  his  anxietj  and 
"  determination,  if  possible,  to  retain  its  exclu- 
"  sive  use,  seem  alone  a  conclusive  proof.  He 
"  has  spent,  it  is  said,  and  profitably  spent, 
"  more  than  one  hundred  thousand  dollars,  in 
"advertising  his  compound  for  sale — ;  but 
"  had  he  dropped  its  fictitious  and  deceptive 
"  name,  and  advertised  it  by  its  true  name  of 
"  '  Liquid  Soap,'  and  had  made  known  to  pur- 
"  chasers,  that  its  main  ingredients,  were  those 
"  blossoms  of  health,  oil,  ashes  and  alcohol,  I 
"  apprehend  that  this  large  sum  would  not  have 
"  been  expended  at  all,  or  would  have  been 
"  expended  in  vain.  Strip  his  compound  of 
"  its  false  and  borrowed  name,  its  imaginary 
"  blossoms,  reduce  it  from  a  balm  into  a  soap, 
"  and  its  sales  will  be  those  of  a  soap,  not  of  a 
"  quack  medicine,  held  forth  to  the  world  as 
"  curing  nearly  all  the  diseases  that  flesh  is 
"  heir  to." 

"  It  has  been  insisted  that  the  very  extra va- 
"  gance  of  the  plaintiff's  pretensions,  is  proof 
"  that  they  are  harmless,  and  rather  fitted  to  pro- 
"  voke  mirth,  than  criticism  and  censure.    And, 


TRADE  MARKS.  39 

"  it  must  be  admitted,  that  it  would  be  difficult 
"for  a  judge,  even  of  the  most  approved  and 
"  habitual  gravity,  to  read  the  plaintiff's  ])aper 
"  of  directions  without  a  smile.  But  we  cease 
"  to  smile,  when  we  remember  that  these 
•  "  falsehoods,  for  such  they  are,  are  printed  and 
"  circulated  with  the  intent  that  they  shall  be 
"  believed,  and  in  feet,  that  there  are  thousands 
'*  uport  thousands,  who  read  them  and  believe. 
"We  cease  to  smile,  when  we  remember, 
"  that  the  plaintiff,  who  boldly  claims  the  aid  of 
"  a  court  of  equity,  is  filling  his  pockets,  by 
"abusing  the  credulity  of  the  young,  the 
"inexperienced,  the  weak  and  the  ignorant, 
"  and  that  he  resorts  to  misrepresentations  and 
"fiilsehood,  to  induce  those  to  purchase,  who 
"would  not  otherwise  buy  —  and  those  who 
"  buy,  to  give  a  higher  price  than  they  would 
"otherwise  pay  —  if  this  is  not  deceiving  and 
"  defrauding  the  public  —  what  is?  " 

Upon  these  facts,  the  learned  judge  thus  states 
his  conclusions  of  law: 

"Even  upon  the  supposition  that  all  the 
"  material  allegations  in  the  complaint  are  true, 
"  the  conduct  and  proceedings  of  the  plaintiff, 
"have  been  such,  as  justly  to  preclude  him 
"  from  any  relief  in  a  court  of  equity."  "  It 
"  may  be  true  that  the  defendants,  if  permitted 
"  to  use  in  their  contemplated  sales,  a  trade 
"  mark,  apparently  the  same  as  that  of  the 
"  plaintiff,  would  commit  a  fraud  upon  the 
"  plaintiff  and  upon  the  public  —  but  if  the 
"  plaintiff  is  himself  engaged  in  a  systematic 


40  THE  LAW   OF 

"  plan  for  deceiving  the  public  — if  he  has  been, 
"  and  is,  endeavoring,  constantly  and  daily,  to 
"  multiply  his  sales,  and  swell  his  profits, 
"  by  false  representations  of  the  composition, 
"  qualities  and  uses  of  the  liquid  compound, 
"  which  he  invites  the  public  to  biiy  —  a  court 
"  of  equity  would  violate  its  principles,  and 
"  abuse  its  powers,  by  consenting  to  aid  him,  by 
"  an  injunction  or  otherwise,  in  accomplishing 
*'  his  designs." 

"  Those  who  come  into  a  court  of  equity, 
"  seeking  equity,  must  come  with  pure  hands 
"  and  a  pure  conscience.  If  they  claim  relief 
"against  the  fraud  of  others,  they  must  them- 
"  selves  be  free  from  the  imputation.  If  the 
"  sales  made  by  the  plaintiff,  are  effected,  or 
"  sought  to  be,  by  misrepresentation  and  false- 
"  hood,  he  cannot  be  listened  to,  when  he  com- 
"  plains  that  by  the  fraudulent  rivalry  of  others, 
"  his  own  fraudulent  profits  are  diminished." 

"  An  exclusive  privilege  for  deceiving  the 
"  public,  is  assuredly  not  one  that  a  court  of 
"  equity  can  be  required  to  aid  or  sanction.  To 
"  do  so,  would  be  to  forfeit  its  name  and 
"  character." 

The  learned  judge  then  briefly  reviews  the  pre- 
ceding- authorities,  upon  the  doctrine  —  which  are 
hereinbefore  cited  —  but  thus  premises  his  review : 

'•  I  have  seldom  deemed  it  necessary  to  cite 
"  authorities,  when  there  is  a  clear,  plain,  firm 
''ground  of  principle,  to  stand  upon  —  and  I 
"  know  that  I  stand  upon  this  ground,  in  hold- 
"  ing  that  this  inj  unction  ought  to  be  dissolved." 


TRADE  MARKS.  41 

This  doctrine  may  now  be  considered  as  so 
firmly  established,  as  to  admit  of  no  doubt  or 
discussion. 

It  is  true,  that  in  another  case,  occurring  in  the 
same  court,  at  about  the  same  time,  in  wliich  the 
same  plaintiff  was  seeking  the  same  relief  against 
another  defendant,  {Fet ridge  v.  Merchant,  4  Abb. 
Pr.  R.,  156,)  Mr.  Justice  Hoffman  intimated  a  dif- 
ferent conclusion,  upon  the  same  question,  and 
says,  that  in  his  views, 

"  The  question  should  be  judged  of  solely 
"  as  between  the  immediate  parties,  and  the 
"  public  be  left  to  its  own  guardianship," 
"  but,"  he  adds  "  I  abstain  from  urging  the 
"  reasons  of  my  opinion  in  this  particular, 
"which  the  different  views  of  other  judges, 
"  and  especially  of  Mr.  Justice  Duer,  in  the 
"  case  of  Fetridye  v.  Wells,  just  decided,  instruct 
"  me  may  be  wholly  wrong,  because  my  con- 
"  elusion  in  this  case,  will  turn  upon  another 
"  point." 

That  point,  we  shall  have  occasion  to  advert  to 
hereafter,  in  another  connection. 

As  it  is  the  aim  of  this  work  to  present  a  digest 
of  all  the  reported  cases,  upon  the  subject  of  which 
it  treats — we  ought  not  to  omit  to  state,  that  in  the 
case  of  Stewart  v.  Smithson,  1  Hilton,  119  —  the 
Coui't  of  Common  Pleas  of  New  York  city,  does 

0 


42  THE  LAW    OF 

not  seem  to  have  recognized  this  salutary  doctrine 
we  are  now  considering. 

In  that  case,  the  trade  marks  alleged  to  have 
been  fraudulently  imitated,  were,  "  Hall  &  Moody's 
patent  thread,  Barnsley,"  and  "Grant  &  Wood's 
patent  tln^ead,  Berwick." 

The  question  arose  on  a  motion,  on  the  part  of 
the  defendant,  for  leave  to  amend  his  answer,  by 
insertions  of  the  averments  that  "the  alleged  trade 
marks  of  the  plaintiff  were  and  are  fraudulent 
trade  marks,  adopted  and  used  by  the  plaintiff, 
with  intent  to  deceive  and  defraud,  and  that  the 
thread  in  the  packages  upon  which  said  marks  were 
affixed,  was  not  a  patented  article  —  that  no  patent 
had  ever  existed  for  the  same,  that  the  said  thread, 
was  not,  in  fact,  manufactm*ed  by  "  Hall  &  Moody " 
or  by  "Grant  &  "VYood"  nor  was  the  same  manu- 
factured at  "Barnsley"  or  at  "Berwick." 

The  motion  for  leave  thus  to  amend  the  answer, 
was  denied,  and  the  order  denying  the  motion,  was 
affirmed  by  the  full  bench  of  the  Common  Pleas 
Com't  expressly  upon  the  ground,  that  "the  pro- 
posed amendment  set  up  no  legal  defence  to  the 
claim  of  the  plaintiff." 

If,  by  this,  is  intended,  that  proof  of  the  facts 
set  up  in  the  proposed  amendment,  would  not 
operate  as  a  bar  to  the  relief  claimed  by  the  j^lain- 


TRADE  MARKS.  43 

ti£F,  the  case  is  at  variance  with  the  settled  doctrine. 
It  may  be,  however,  (though  no  such  intimation 
appears  in  the  report  of  the  case)  that  the  question 
was  disposed  of,  as  one  of  pleading  simply  —  that 
although  a  defendant  could  not  be  allowed  to  plead 
the  alleged  fraud  of  the  plaintiff,  as  an  answer  to 
his  own  alleged  fraud — yet,  that  upon  the  hearing, 
such  fraud  being  made  to  appear,  the  court,  in  the 
exercise  of  its  equity  powers,  would  be  bound  to 
take  notice  of  it,  by  a  denial  of  the  relief  sought. 


There  is  too  much  reason  to  believe  that  fraudu- 
lent and  deceptive  trade  marks  are  in  common  use 
among-  a  class  of  manufacturers  and  dealers,  who 
have  heretofore  claimed  and  received  the  protection 
of  the  courts  of  England  and  the  United  States, 
and  whose  respectable  business  position,  extensive 
business  connection,  and  large  reputed  wealth, 
should  place  them  above  all  suspicion  of  resorting 
to  deceptive  devices  to  enhance  their  gains. 

But  recent  disclosures  have  revealed  the  startling 
fact,  that  the  representations  of  quantity,  upon  the 
spools  of  manufacturers  of  cotton  thread,  the  cases 
and  packages  of  various  kinds  of  cloths,  silks,  vel- 
vet, calico,  linen,  merinoes,  braids,  ribbons,  and 
indeed  of  almost  everything  sold  in  the  shops  or 


44  THE   LAW   OF 

even  the  factories- — representations  which  form  a 
prominent  part  of  the  trade  mark  of  the  manufac- 
tm*er  or  merchant,  are,  in  almost  every  instance, 
materially  false,  representing  the  package  to  contain 
a  quantity,  larger,  and  in  many  cases,  much  larger, 
than  it  does. 

This  false  representation,  it  seems,  is  usually 
perfectly  well  understood,  between  the  manufactu- 
rer and  the  wholesale  purchaser,  and  is  made  with 
intent  to  deceive  and  defraud  the  petty  trader  and 
the  consumer. 

Upon  this  large  class  of  the  community,  whose 
protection  from  wrong  and  imposition,  it  is  the 
primary  pro^'ince  of  the  law  of  trade  marks  to 
secure ;  upon  this  class,  the  vast  aggi'egate  of 
whose  individual  petty  means,  constitutes  the 
wealth  and  power  of  a  commercial  nation,  this  sys- 
tematic fraud  and  deception  falls  with  a  crushing 
weight. 

The  extent  to  which  it  is  carried  is  enormous. 
The  gains  resulting  from  it,  are  almost  incredible. 
The  wrong  and  injmy  which  it  inflicts  are  incal- 
culable- 
There  is  not  a  thing  that  we  eat,  or  di'ink  or 
wear,  which  is  pm-e  and  genuine. 

Good  things  become  condemned  by  the  foul 
imitations    which   men   sell    for   them  —  and    the 


TRADE   MARKS.  45 

clieatery  of  the  multitude  robs  the  honest  man  of 
his  clue  repute.  Instead  of  standing  out  in  bright 
singuhirity,  he  is  confounded  in  the  mass  of  rogues. 
Short  measure,  false  weights  —  diminished  numbers, 
forged  tickets  and  labels  —  fictitious  representa- 
tions —  adulterated  goods  and  worthless  fabrica- 
tions —  are  the  things  upon  which  the  once  honest 
manufacturer  and  trader  now  thrives. 

It  seems  to  be  the  spirit  of  the  age  —  and  to 
pervade  all,  save  the  most  uncivilized  regions,  of 
the  world. 

It  is  not  easy  to  de\^se  a  method  by  which  an 
evil,  so  deeply  rooted,  of  such  long,  secret  continu- 
ance, and  producing  such  gigantic  fortunes  to  the 
guilty  parties,  may  be  speedily  eradicated. 

Among  other  means,  by  which  such  a  result  may 
be  reasonably  hoped  for,  must  be  included,  the  dis- 
semination, in  all  ways — so  that  the  knowledge  of 
the  fact  may  become  universal — that  such  fraudu- 
lent manufacturers  and  dealers,  are  beyond  the  pale 
of  the  law's  protection  —  that  they  have  no  pro- 
perty, whatever,  in  any  valuable  sense,  in  the  trade 
marks  which  they  employ — that  one  may  manu- 
facture goods  in  imitation  of  theirs,  sign  them  with 
their  signs,  and  expose  them  for  sale  in  the  market, 
in  such  guise  that  it  is  wholly  impossible  to  distin- 
guish them  from  the  genuine — and  thus  destroy 


46  THE  LAW  OF 

their  reputation,  and  appropriate  what  might  be 
their  lawftil  gains — and  they  are  wholly  without 
redress.  They  may  seek  relief  in  our  courts  of 
equity,  but,  no  sooner  have  they  crossed  the  thresh- 
old, than  the  impuiity  of  their  hands  is  pointed 
at,  and  they  are  bidden  to  depart. 

Such  a  severely  practical  teaching  of  the  gi-eat 
truth  that  "  honesty  is  the  best  policy,"  may  surely 
contribute,  at  least,  to  bring  about  an  abandonment 
of  this  wide  spread  evil,  and  gi-eat  commercial 
fraud,  and  have  some  influence  in  effecting  a  sorely 
needed  reform  in  the  morals  of  trade. 


CHAPTER  III. 
Op  the  MAimEE  in  "which  Propeett  in  Teade  Maeks  may 

BE  acquired. 

Property  in  trade  marks — by  which,  is  always 
intended,  the  right  to  protection  in  their  exclusive 
use  —  is  primarily  acquired,  by  an  original  adop- 
tion, appropriation  and  actual  use,  by  the  manufac- 


TRADE  MARKS.  47 

turer  or  other  p.Tsoii,  possessed  of  an  exclusive 
right  in  the  thing  designated. 

It  must  not  be  supposed  that  this  character  of 
property  holds  any  such  analogy  to  that  of  the 
author  in  the  productions  of  his  mind,  for  which  he 
may  secure  a  copyright,  or  of  the  inventor  in  the 
subject  of  his  invention,  and  for  which  he  may 
secure  a  patent,  that  the  marks,  names,  letters, 
signs,  devices  or  symbols,  originally  adopted,  must 
be  such  as  have  "  never  before  been  known  or  used." 

It  is  not  in  such  a  sense,  that  the  adoption  or 
appropriation  is  required  to  be  original. 

If  the  name  or  marks  adopted,  were  not,  at  or 
near  the  time  of  their  adoption,  in  actual  use  to 
designate  the  same  or  similar  articles  of  manufac- 
ture, the  adoption,  it  is  presumed,  would  be  held  to 
be  sufficiently  original  to  comply  with  the  legal 
requisition,  even  though  the  same  name  or  marks 
had  been  used  in  like  manner,  at  some  previous 
period.  The  sole  purpose  being,  that  the  marks 
adopted  shall  be  such  as  will  identify  the  thing 
named,  as  that  of  the  person  naming  it,  and  distin- 
guish it  from  all  others,  this  purpose  is  accom- 
plished, if  the  name  be  not  then  in  like  use,  or  had 
not  been,  within  a  period  so  recent  as  would  be 
likely  to  defeat  the  primary  purpose  of  distinctive 
designation. 


48  THE  LAW   OF 

Undoubtedly,  if  the  name  adopted,  had  before 
been  in  such  common  use  to  designate  the  same  or 
similar  articles,  as  to  lose  its  identifying  or  distin- 
guishing capacity,  no  exclusive  right  to  its  use 
could  be  acquired,  by  adoption,  even  though  it 
could  not  be  made  to  appear,  that  it  was  in  such 
use,  at  the  precise  time  of  its  adoption. 

The  distinguishing  capacities  of  a  name  or  trade 
mark  adopted,  may,  in  fact,  become  impaired  by 
its  common  previous  use,  or  its  then  present  employ- 
ment, as  a  designation  for  articles  of  an  entirely 
dissimilar  general  character  from  those  to  which  it 
is  sought  to  be  appropriated — though  the  general 
rule  is  understood  to  be,  that  the  name  adopted 
should  not  then  be,  or  have  been  before,  used  as  a 
designation  for  articles  of  the  same  or  a  similar 
nature. 

Ha\dng  in  view  the  true  policy  of  the  law,  in 
extending  its  protection  to  the  exclusive  right  to 
the  use  of  adopted  trade  marks,  it  cannot  be  sup- 
posed that  any  different  or  greater  extent  of  origi- 
nality, in  him  who  makes  the  appropriation,  would . 
be  required,  than  such  as  has  been  here  stated  — 
but  the  subject  of  the  precise  nature  and  extent  of 
the  prior  use  of  a  trade  mark,  as  operating  to  defeat 
a  claim  of  exclusive  property,  has  not  been  defini- 
tively determined  by  any  reported  decision. 


TRADE  MARKS.  49 

In  the  case  of  Fetridge  vs.  Me)-chant  —  4  Abb., 
157,  Mr.  Justice  Hoffman,  upon  the  hearing,  dis- 
solved the  prehminary  injunction  that  had  been 
allowed,  upon  the  ground  that  the  evidence  left  the 
question  of  priority  of  appropriation  so  doubtful, 
that  a  court  of  equity  ought  not  to  conclude  the 
issue,  by  an  injunction,  before  a  trial  at  law  had 
determined  the  point. 

We  are  not  aware  of  any  reported  case,  other 
than  this,  in  which  the  conclusion  of  the  court  was 
rested  upon  the  question  of  originality  of  adoption, 
—  in  the  sense  of  priority  of  appropriation, — of  the 
trade  mark  in  question. 

We  therefore  quote  at  length,  the  language  of 
the  learned  judge,  in  discussing  this  question,  in 
connection  with  the  evidence,  in  that  case.  He 
says : 

"  This  brings  me  to  a  point  of  most  difficulty 
"in  the  case.  Did  the  plaintiff  first  appropri- 
"  ate  the  term  so  as  to  give  him  a  prior  right  ? 
"Dr.  Fontaine  was  the  first  person  who  used  it 
"in  the  United  States,  and  the  plaintiff  derived 
"  his  title  from  Fontaine,  by  purchase  of  his 
"secret  and  recipe.  This  was  in  1846.  lie 
"manufactured  an  article  which  he  called 
" '  Fontaine's  Balm  of  Thousand  Flowers '  — 
"  and  he  says  that  the  same  name  was  used  for 
"  cosmetics,  in  Europe,  in  different  languages. 

"A  large  number  of  witnesses  depose  to  the 
"  following  effect  —  I  use  the  language  of  one 
7 


50  THE    LAW  OF 

"  of  them  —  Bazin,  a  perfumer  of  fifteen 
"years:  'That  to  his  knowledge  the  terms 
"'Balm'  and  'Thousand  Flowers'  and  'Balm 
"of  Thousand  Flowers,'  have  been  in  common 
"  use  in  this  country,  and  in  foreign  countries, 
"  in  their  respective  languages,  for  more  than 
"  ten  years,  as  applied  to  numerous  kinds  of 
"cosmetics  and  fancy  soaps.'  Similar  state- 
"  ments  are  made  by  other  witnesses.  One  says 
"  that  it  has  been  so  constantly  used  and  applied 
"  to  cosmetics,  for  twenty  years,  in  this  country, 
"  and  elsewhere,  that  he  has  come  to  consider  it 
"a  descriptive  name  of  a  cosmetic. 

"  These  affidavits  are  met  by  counter  state- 
"  ments  of  nmnerous  dealers,  to  the  effect,  that 
"  they  have  never  met  with,  or  heard  of,  a  cos- 
"  metic  under. that  name,  except  those  in  ques- 
"  tion,  in  this  case.  They  have  had  more  or 
"less  opportunities  of  acquiring  such  know- 
"  ledge  —  and  it  is  urged,  and  with  much  force, 
"that  the  defendants  have  not  proven  one 
"instance  of  its  use,  except  what  may  be 
"traced  to  Fontaine  —  to  the  plaintiff,  or  the 
"  defendant. 

"One  new  question  might  arise  upon  the 
"  facts,  which  the  weight  of  evidence  seems  to 
"  establish,  whether,  if  the  name  was  first  used 
"in  this  country  by  Fontaine,  in  1846,  and  was 
"  acquired  from  him  by  the  plaintiff,  its  general 
"use  in  other  countries,  in  their  several  lan- 
"guages,  would  justify  the  employment  by 
"  others. 

"  Fontaine  says,  that  he  first  found  it  in  a 
"French  writer.  It  was  commonly  adopted 
"  elsewhere.  It  may  be,  that  one  would  have 
"  a  right  to  use  it  merely  translating  it. 


TRADE  MARKS.  '  51 

"  My  conclusion  upon  this  leading  point  of  the 
"  case,  is,  that  the  title  of  the  plaintiff  to  appro- 
"  priate  the  term  to  himself,  is  not  made  out." 

It  is  langnage  like  the  foregoing,  of  Mr.  Justice 
Hoffman,  and  the  terms  "  priority  of  use,"  "  pri- 
ority of  adoption,"  "  original  designation,"  and  the 
like,  so  frequently  employed  by  other  learned 
judges,  when  stating  the  legal  pre-requisites  to  the 
existence  of  an  exclusive  right,  that  renders  it  neces- 
sary to  guard  against  the  impression  which  such 
language  might  produce,  that  the  right  may  in  any 
sense,  be  predicated  upon  the  inventive  faculty  of 
the  manufacturer  or  merchant,  in  devising  a  new 
name  or  mark,  to  designate  his  merchandise. 

Such  a  doctrine,  which  carries  with  it  the  idea 
of  ownership  in  the  abstract  name,  thus  de\dsed,  is 
nowhere  decided — and  would  certainly  be  in  con- 
flict with  the  well  established  principles  upon  which 
trade  marks  are  recognized  and  protected  as  pro- 
perty. 

If,  indeed,  a  manufacturer  invent  a  name  for  his 
merchandise,  which  possesses  the  other  character- 
istics requisite  to  form  a  distinguishing  trade  mark, 
entitling  him  to  protection  in  its  exclusive  use  —  it 
will  be  more  likely  to  possess  that  quality  which  is 
absolutely  essential,  namely,  that  of  identifying  as 
his,  and  distinguishing  froni  all  others,  the  article  to 


52*  THE    LAW  OF 

which  it  is  appHed  —  for  the  reason  that  it  is  his 
invention  —  and  therefore  was  never  before  known 
or  used — but  noX,  for  that  reason,  is  his  right  to 
protection  in  its  exchisive  use,  made  in  any  manner 
stronger  or  better. 


Property  in  trade  marks,  may  be  obtained  by 
transfer  from  him  who  has  made  the  primary  acqui- 
sition. 

Here,  again,  it  should  be  remembered,  that,  as 
no  one  can  acquire  or  possess  the  mere  right  to  the 
exclusive  use  of  a  name,  unconnected  with  any- 
thing to  which  it  is  applied,  so,  of  course,  no  such 
right  can  be  transferred  by  contract. 

It  is,  therefore,  essential  to  the  acquisition  of  the 
property,  in  this  manner,  that  the  transferee  should 
be  possessed  of  the  right  either  to  manufacture  or 
to  sell  the  merchandise  to  which  the  trade  mark 
has  been  attached. 

The  case  in  the  Supreme  Court  of  New  York 
of  Samuel  et  al.  vs.  Burger  et  aL,  4  Abb.  Pr.  R., 
88,  fully  illustrates  this  doctrine. 

In  this  case,  it  was  averred  that  one  Brindle,  a 
watchmaker,  had  acquired  a  rejoutation  as  such  — 
and  that  all  watches  manufactured  by  him,  were 


TRADE   MARKS.  53 

stamped  with  his  name.  That  Sylvester  S.  Sam- 
uel pm'chased  from  Brindle,  the  right  to  stamp  his, 
(Brindle's,)  name,  on  watches  manufactm'ed  by 
Samuel — and  that  Samuel  had  assigned  to  the 
plaintiffs,  the  right  to  stamp  Brindle's  name  on 
watches  made  by  them.  The  defendants  kept  on 
hand  for  sale,  watches  actually  manufactm'ed  by 
Brindle,  and  stamped  with  his  name,  and  the  suit 
was  for  an  injunction  to  restrain  them  from  so 
doing. 

The  court  decided  that  the  right  to  use  the 
name,  without  the  thing,  could  not  be  trans- 
ferred. 

"If,"  says  the  learned  judge,  " the  right  of 
"  the  plaintiffs  to  use  the  name  of  Brindle  as  a 
"  trade  mark,  were  clear,  and  the  defendants 
"  were  seeking  to  make  sale  of  watches  made 
"  by  themselves,  as  those  manufactured  by 
"  Brindle,  then,  an  injunction  should  go  —  but 
"  the  plaintiffs  cannot  call  on  this  court  to  aid 
"  them  in  passing  off  watches  made  by  them,  as 
"  those  manufactured  by  Brindle." 

There  can  be  no  doubt  that  a  contract,  by  which 
a  manufacturer  disposes  absolutely  of  his  business, 
and  vests  in  another  the  right  to  manufacture  the 
goods  which  he  has  before  produced,  and  which 
have  become   known  in  the  market  by  a  distin- 


54  THE    LAW  OF 

guisliing  trade  mark,  tliough  it  were  silent  upon 
the  subject  of  such  trade  mark,  by  necessary 
impHcation,  vests  in  the  piu'chaser  the  exclusive 
right  to  its  use  as  it  was  before  used. 

It  may  be,  that  an  express  provision  in  such 
contract,  that  the  vendee  should  not  use  the  trade 
mark  before  used  by  the  vendor,  might  be  enforced 
in  law — but,  if  so,  certainly  not  upon  the  ground 
that  the  right  in  the  mere  name  was  retained  or 
reserved  in  the  vendor,  or  that  he  could  convey 
such  right  to  another,  after  parting  with  that  which 
was  the  essential  condition  of  his  own  possession 
of  the  right. 


Whether  a  transfer  of  a  manufacturing  estab- 
lishment, which  includes  in  express  terms  the  "  good 
will"  that  it  has  acquu'ed, — by  which  is  intended, 
the  probability  that  the  customers  who  are  in  the 
habit  of  dealing  there,  will  continue  to  do  so  —  the 
transferor  covenanting  not  to  embark  in  the  like 
business,  in  the  same  town,  carries  with  it,  by  impli- 
cation, the  right  to  use  the  name  under  which  the 
establishment  has  become  known,  and  acquired  its 
celebrity — where  that  name  consists  in  whole,  or 
in  part,  of  the  proper  name  of  the  vendor,  is  a 
question  of  no  little  interest. 


TKADE   MARKS.  55 

It  may  not,  perhaps,  be  within  the  strict  purview 
of  the  law  of  trade  marks — but,  in  some  respects, 
it  presents  such  analogies  to  questions  relating  to 
that  character  of  property,  as  to  involve  the  con- 
sideration of  analogous  principles  in  its  discussion. 

In  the  case  of  Howe  v.  Searing,  10  Abb.  Pr.  R., 
264,  this  question  has  lately  undergone  elaborate 
investigation  in  the  Superior  Com't  of  the  city  of 
New  York,  and  a  full  review  of  the  facts,  and  the 
opinions  of  the  learned  judges  in  that  case,  will  be 
found  to  be  instructive,  as  illustrating  this  branch 
of  our  subject — namely  the  conventional  transfer 
of  trade  marks. 

In  this  case,  the  plaintiff  sold  to  the  defendant's 
assignor,  his  bakery  establishment,  situated  upon 
Broadway,  in  the  city  of  New  York — and  long 
known  and  celebrated  under  the  name  of  "Howe's 
Bakery." 

The  sale  included  all  the  personal  effects  con- 
nected with  or  appertaining  to  the  establishment — 
and,  in  express  terms,  included  the  ''good  will." 

The  vendor  covenanted  not  to  carry  on  the  like 
business  within  the  citv  of  New  York,  as  a  condi- 
tion  of  the  transfer. 

The  vendee  entered  upon  the  possession  of  the 
property,  continued  the  business  at  the  same  place, 
retaining  the  old  signs,  and  using  the  name  "  Howe's 


56  THE   LAW  OF 

Bakery,"  upon  circulars,  bills,  tickets,  wagons,  and 
in  every  way  in  which  it  had  been  before  used  by 
the  vendor.  This  use  was  continued  by  the  vendee 
or  his  assigns  for  some  seven  or  eight  years,  with- 
out any  judicial  question  of  the  right  by  the  vendor. 

Not  long  before  the  action  was  brought,  the 
plaintiff,  Howe,  desuing  again  to  return  to  the 
baking  business,  made  an  agreement  with  his 
vendor,  by  which  he  acquhed  the  right  to  resume 
the  business,  within  certain  limits  in  the  city  of 
New  York,  and  at  No.  850  Broadway — being 
about  a  half  a  mile  from  the  old  locality. 

By  this  agreement,  it  was  expressly  stipulated, 
that  "he  was  not  in  any  manner  to  interfere  with 
the  business,  earned  on  at  No.  432  Broadway, 
known  as  'Howes  Bakery y 

Under  this  agreement,  he  resumed  the  business 
at  No.  850  Broadway,  and  shortly  thereafter,  [his 
vendee  having  sold  and  transferred  to  the  defend- 
ant,] brought  this  action,  to  restrain  the  defendant 
from  using  the  words  or  name  "  Howe's  Bakery," 
as  his  sign  or  designation,  or  in  any  manner  con- 
nected with  his  business. 

It  was  in  proof,  at  the  trial,  and  conceded  that 
the  use  of  the  name,  in  the  manner  in  which  it 
was  used  by  the  defendant,  induced  persons  to 
deal  with  the  defendant,  at  the  old  establishment 


TEADE   MARKS.  67 

No.  432  Broadway,  in  the  supposition,  thai  they 
were  deahng  with  Howe,  the  phiintifF,  who  would 
otherwise  transfer  their  custom  to  the  plaintiff's 
new  establishment. 

Under  these  facts,  the  judgment  of  the  coui't 
below,  granting  the  injunction  prayed  for,  was 
affirmed  on  appeal.  The  opinion  of  the  com-t  was 
given  by  Mr.  Justice  Hoffman,  and  a  decided  dis- 
senting opinion  was  pronounced   by  Mr.  Justice 

MONCRIEF. 

The  questions  involved  in  the  case  are  of  much 
interest  and  importance,  in  a  commercial  commu- 
nity, Avhere  the  custom  has  long  prevailed,  to  no 
inconsiderable  extent,  of  continuing  the  use  of  the 
name  or  style  of  a  partnership,  or  commercial  firm, 
long  after  the  original  parties,  whose  names  compose 
it,  have  deceased,  or  have  dissolved  their  connection 
witli  the  business. 

It  was  conceded,  by  the  learned  judge,  who  gave 
the  opinion  of  the  majority  of  the  court — that  the 
covenant  of  the  vendor,  contained  in  his  conti'act 
of  sale  of  the  bakery  establishment,  not  to  caiTy 
on  the  like  business  within  the  city  of  New  York, 
was  not  an  invalid  covenant,  as  in  restraint  of  trade. 
It  follows,  therefore,  that,  but  for  the  subsequent 
agreement,  by  which  the  plaintiff  obtained  the 
privilege  of  resuming  the  business  at  a  paiiicular 


58  THE   LAW  OF 

locality — (viz.:  850  Broadway)  the  plaintiff  could 
have  had  no  standing  in  court,  because  the  sole 
ground  of  his  complaint,  was,  that  the  plaintiff,  by 
the  use  of  the  name  "Howe's  Bakery,"  induced 
persons  to  deal  with  him  at  the  old  establishment, 
who  would  otherwise  deal  with  the  plaintiff  at  his 
new  one. 

But,  the  very  condition  upon  which  the  limited 
privilege  was  granted  to  the  plaintiff,  of  resuming 
the  business  at  850  Broadway,  was,  that  he  should 
"not  in  any  manner  interfere  with  the  business 
carried  on  at  No.  432  Broadway,  known  as  '  Howe's 
Bakery.'  " 

It  is  not  quite  apparent,  how  the  institution  of 
this  suit,  for  the  avowed  purpose  of  securing  to  the 
plaintiff  the  customers  of  the  old  establishment, 
and  depriving  .the  defendant  of  rights  which  he 
had  enjoyed  for  years,  as  a  part  of  the  "good  will" 
of  the  concern,  could  be  otherwise  regarded  than 
as  an  "  interference  with  the  business  carried  on  at 
432  Broadway,  known  as  Howe's  Bakery,"  —  and 
therefore  a  direct  violation  of  the  condition  of  the 
restricted  gi'ant  to  the  plaintiff. 

No  allusion  is  made  to  this  objection  to  the  plain- 
tiff's claim  in  the  reported  opinion  of  the  majority 
of  the  court — perhaps  for  the  reason  that  the 
grounds  upon  which  the  decision  was  finally  rested, 


TRADE   MARKS.  59 

rendered  a  consideration  of  this  question  unne- 
cessary. 

An  unlawful  encroachment  upon  the  good  ivill 
of  a  business,  is  sometimes  the  essence  of  the  wrong 
involved  in  the  violation  of  a  trade  mai'k.  What 
is  intended,  therefore,  by  the  "good  will"  of  a 
business,  becomes  a  question  important  to  be  deter- 
mined. 

It  has  been  defined,  in  brief,  to  be  "  the  proba- 
bility that  the  old  customers  will  resort  to  the  old 
place."  A  more  full  and  satisfactory  definition 
is  given  by  Mr.  Justice  Story — who  describes 
it  as : 

"  The  advantage  or  benefit  which  is  acquired 
"  by  an  establishment,  beyond  the  mere  value 
"  of  the  capital  stock,  funds  or  property  belong- 
"  ing  therein  —  in  consequence  of  the  general 
"  public  patronage,  which  it  receives  from  con. 
"  stant  or  habitual  customers,  on  account  of  its 
"  local  position,  or  common  celebrity  or  repu- 
"  tation  for  skill,  or  affluence,,  or  punctuality, 
"  or  from  accidental  circumstances,  or  even 
*'  from  ancient  partialities  or  prejudices," 
"  Story's  Eq.,  §  99. 

This  definition  of  the  "  good  will "  of  an  estab- 
lishment, is  adopted  as  a  con-ect  one,  by  the 
learned  court  in  this  case. 

The  question,    whether   the    "good   will"  of  a 


60  THE   LAW   OF 

partnersliip  establishment,  upon  the  decease  of  one 
of  the  partners,  becomes  the  property  of  the  sur- 
vivor, or  is  to  be  disposed  of  as  any  other  of  the 
partnership  property,  is  next  elaborately  discussed 
by  the  learned  judge,  and  the  authorities  reviewed 
at  much  length. 

Upon  this  point,  the  court  determines,  that  the 
Aveight  of  authority  is  in  favor  of  the  principle, 
that  the  "  good  will "  of  a  partnership  business,  in 
the  absence  of  proof  to  the  contrary,  must  be 
presumed  to  have  been  the  result  of  the  joint 
skill,  capital  and  industry — when  built  up  by 
the  parties  themselves — or  by  a  jomt  pm'chase, 
when  it  has  been  reared  by  a  predecessor — and, 
as  the  acquisition  was  joint,  the  value  must  be 
shared. 

The  only  case  that  conflicts  with  tliis  doctrine, 
is,  Douglas  vs.  Hammond,  5  Ves.  E,.,  539.  There, 
it  is  explicitly  held,  that  the  "  good  will "  of  a  part- 
nership estabhslunent,  belongs  to  the  surviving 
partner,  that  its  sale  cannot  be  compelled  by  the 
representatives  of  a  deceased  partner — that  it  is 
not  partnership  stock  of  which  the  executor  may 
requhe  and  enforce  a  di\asion — but  belongs  of 
right  to  the  sm'vdvor. 

The  cases  on  the  other  side  are  numerous — 
vide  Crawshay  \B.  Collins,  15  Ves.,  227;   Cantwell 


TRADE   MARKS.  61 

VS.  Lye,  17  Ves.,  335;  Cormick  vs.  McCuhhen,  1 
Shaw  &  Ballantyne,  540  ;  Chissam  vs.  Dewes,  5 
Russel  R.,  29  ;  McDonald  vs.  Richardson,  1  Geff. 
E.,  81 ;  Hitchcock  vs.  CoA^^/?,  1  Ad.  &  EL,  438  ; 
Elves  vs.  Crofts,  10  Com.  Bencli  R.,  241 ;  Leiols  vs. 
Langdon,  7  Simons,  421  ;  DougJierty  vs.  F<z;i  iV<?5- 
^r«/i<^,  1  Hoff.  Ch.  R.,  68  ;  Williams  vs.  Wilson,  4 
Sand.  Ch.  R.,  379  ;  2  Bell's  Com.,  645. 

The  court  next  proceeds  to  the  discussion  of  the 
doctrine,  which  it  regards  as  well  settled,  that, 
upon  the  dissolution  of  a  partnership  or  upon 
the  sale  of  the  business  of  an  establishment,  in 
the  absence  of  any  express  stipulation — there  is 
no  implied  obligation  upon  the  vendor,  or  the  out- 
going partners,  to  refrain  from  setting  up  the 
same  trade  or  business,  and  forming  a  new  estab- 
lishment for  carrying  it  on,  even  at  the  next  door 
to  the  very  place  where  the  former  business  was 
established,  and  is  continued. 

In  support  of  this  doctrine  the  following  autho- 
rities are  cited:  —  Davles  vs.  Hodgson,  25  Bea., 
177;  Cook  YS.  Collin gridge,  Jacobs  R.,  623;  Leivis 
vs.  Langdon,  7  Simons,  421;  Clinton  vs.  Douglass, 
1  H.  R.  V.  Johns.,  176. 

In  the  case  last  cited  the  learned  Vice-Chan- 
cellor  (Sir  R.  Page  Wood),  discusses  the  question 


62  THE   LAW  OF 

at  mucli  leng-th,  and  maintains  the  correctness  of 
the  doctrine  by  mucli  learned  argument. 

[Though  either  partner  may  be  at  hberty,  in  the 
absence  of  any  express  stipulation  to  the  conti'ary, 
upon  a  sale  or  dissolution,  to  establish  the  same 
kind  of  business  wherever  he  please — yet  neither 
party  has  a  right  to  retain  and  use  the  old  signs 
containing  the  names  of  the  former  partners,  or 
the  style  of  the  late  fiim. 

Upon  this  question,  the  doctrine  laid  down  in 
the  case  of  Peterson  vs.  Humphrey,  4  Abb.,  394,  is 
declared  to  be  analogous  to  that  upon  which  pro- 
perty in  trade  marks  is  protected — namely — the 
false  representation,  as  the  basis  of  a  fictitious 
credit,  made  by  him  who  adopts  or  retains  the  use 
of  the  old  partnership  sign,  after  it  has  ceased  to 
desig-nate  an  actual  existence. 

Peterson  &  Himiphi-ey  were  pai-tners  in  New 
York  city,  and  failed.  By  composition  with  their 
creditors,  they  were  enabled  to  resume  business  — 
and  did  so — each  on  his  own  account.  Humphrey, 
by  transfer,  became  the  owner  of  all  the  debts  of 
the  old  fiiTii,  and  resumed  business  at  the  store 
previously  occupied  by  the  partnership.  Peterson 
established  a  like  business  in  another  street.  Hum- 
phrey retained  one  of  the  old  partnership  signs 


TRADE    MARKS.  63 

upon  the  store,  and  at  the  suit  of  Peterson,  an 
injunction  Avas  ordered,  restraining  the  use  of  the 
sign.     The  coiu't  says  : 

"  The  rule  as  to  the  liability  of  a  third  per- 
"son  for  a  false  representation  as  to  the  credit 
"of  another,  although  originating  in  the  com- 
"mon  law  courts,  contains  the  true  elements  ot 
"the  liability  for  false  signs  or  trade  marks, 
"  with,  perhaps,  a  slight  modification. 

"  The  sign  or  mark  must  be  false  in  fact, 
"  and  be  so  known  to  the  party  using  it,  and 
"  have  been  used  with  the  intention  to  deceive, 
"  and  be  of  such  character  as  would  mislead  a 
"person  of  ordinary  caution.  The  injunction 
"may  be  proper,  without  any  other  proof  of 
"the  knowledge  of  the  falsity  or  of  the  inten- 
"  tion  to  deceive,  than  that  which  arises  from 
"the  fact  that  there  is  falsity,  and  that  the 
"effect  will  necessarily  be  to  deceive." 

In  this  case,  it  appeared,  that  upon  one  of  the  old 
signs  of  the  firm,  Humphrey  had  caused  to  be 
painted  above  the  firm  name,  "  Peterson  &  Hum- 
phrey," the  words  "Humphrey  &  Co.,  formerly," 
so  that  the  sign  read,  "  Humphrey  &  Co.,  formerly 
Peterson  &  Humplu-ey."  The  added  words,  say 
the  court,  were  "so  large  and  distinct  that  nobody 
could  be  deceived."  This  language  sufficiently 
indicates  the  character  of  those  signs  that  so  fre- 
quently meet  the  eye  in  a  commercial  city,  in 
which  the  added  name  and  the  words  "formerly" 


64  THE  LAW  OF 

or  "successors  to"  are  so  small  and  indistinct  as 
to  escape  observation,  unless  upon  careful  inspec- 
tion— leaving  the  name  or  names  upon  the  old 
sign,  the  prominent  designation. 

In  the  large  majority  of  such  cases,  the  signs  are 
fraudulent,  and  their  use  would  be  prohibited  by 
injunction.] 

The  several  questions  discussed  by  the  learned 
court  in  the  case  of  Howe  vs.  Searing,  are  of  great 
general  interest — and  the  able  manner  in  which 
the  authorities  upon  either  side  are  reviewed,  ren- 
ders the  case  of  singular  value — and  the  space  we 
assign  to  its  exposition,  needs  no  apology. 

The  novelty,  as  well  as  interest,  of  many  of  the 
inquu'ies,  makes  us  willing  to  forget  that  they 
seem  to  have,  at  best,  but  a  remote  connection  with 
the  real  question  in  controversy  in  the  case. 

That  question  was  simply  this:  whether  the 
name  of  a  fii-m,  or  the  style  under  which  a  business 
is  conducted,  constitutes  part  of  the  "good  will"  of 
the  business,  and  passes,  with  a  sale  of  the  business 
by  a  contract  which  expressly  includes  the  "  good 
will." 

In  the  case  of  Clinton  vs.  Douglas,  the  learned 
vice-chancellor  expressly  holds  that  it  does.  He 
says : 


TRADE   MARKS.  65 

"The  name  of  a  firm  is  a  ver}'-  important 
"part  of  'the  good  will'  of  the  business,  car- 
"  ried  on  by  the  lirni. 

"A  person  says,  '  I  have  always  bought  good 
"  articles  at  sueh  a  place  of  business — I  know 
"it  by  that  name,  and  I  send  to  the  house  of 
"  business  identified  by  that  name  for  that  pur- 
"  pose.'  That  the  name  is  an  important  part  of 
"the  'good  will'  of  a  business,  is  obvious, 
"  when  we  consider  that  there  are,  at  this 
"  moment,  large  banking  houses,  and  brewing 
"  firms,  and  others,  in  this  metropolis,  which 
"  do  not  contain  a  single  member  of  the  indi- 
"  vidual  name  exposed  in  the  firm." 

Indeed,  if,  as  is  conceded,  the  "  good  will "  of  an 
establishment  includes  all  those  incidents  and 
appurtenances  which  enhance  the  probability  that 
tlie  old  customers  will  continue  to  resort  to  the  old 
place,  and  the  name  and  style  of  the  old  place,  is 
that  which  best  serves  to  preserve  its  character  and 
identity  in  the  minds  of  those  habituated  to  deal 
there,  but  for  which,  they  would  be  led  elsewhere, 
there  can  be  no  escape  from  the  conclusion,  that 
the  name  of  the  establishment  is  not  only  a  com- 
ponent part  of  the  "good  will" — but,  oftentimes, 
far  the  most  prominent  part,  and  of  the  greatest 
value,  and  therefore,  that  the  transfer  of  the 
"good  will"  eo  nomine,  necessarily  includes  the 
name  of  the  establishment. 

The  correctness  of  this  doctrine,  considered  apart 


66  THE    LAW    OF 

from  its  character  in  the  Hght  of  what  may  be 
called  "mercantile  morality,"  is  not  understood  to 
be  impugned  by  the  com-t — although  the  authority 
of  the  vice-chancellor  in  the  case  of  Lewis  v. 
Langdon,  is  spoken  of  as  the  only  direct  authority 
in  its  support. 

The  conclusions  upon  which  the  final  decision 
of  the  case  is  rested,  refer  to  public  policy  and  the 
requisitions  of  commercial  probity,  as  indicated  by 
the  provisions  of  the  Code  de  Commerce  of  France, 
and  a  statute  of  New  York,  passed,  "to  prevent 
persons  from  transacting*  business  under  fictitious 
names." 

By  the  21st  article  of  the  Commercial  Code  of 
France,  it  is  provided  that  "  the  name  of  the  asso- 
ciates can  alone  constitute  the  firm  name "  and  it  is 
declared  that  tliis  is  intended, 

"  To  forbid  persons,  who  succeed  to  the 
"  business  of  a  deceased  merchant,  to  continue 
"  it  under  his  name. 

"  Credit  is  altogether  personal.  It  does  not 
"  transmit  itself  by  cession  or  inheritance.  It 
"  is  won  by  actions  and  capacity.  It  is  not 
"  right,  then,  that  a  successor  should  avail  him- 
"  self  of  a  fallacious  credit,  in  appropriating  a 
"  firm's  name  extinguished  by  the  death  of 
"  those  who  gave  it  value." 

And  M.  Troplong,  in  his  commentaries  upon  the 
civil  law,  alluding  to  the  subject,  says : 


TRADE   MARKS.  67 

"  One  is  astonished  that  such  a  contrary 
"  doctrine  prevailed  formerly  in  France,  and 
"  exists  in  England.  It  is  a  source  of  fraud 
"  upon  a  confiding  public.  The  retirement 
"  or  decease  of  one  of  the  associates  eflFaces 
"the  firm  name  —  another  must  be  created 
"  (Troplong  sur  le  Droit  Civile,  Tom.  12,  372.) 

The  statutes  of  the  State  of  New  York,  cited 
as  exponents  of  the  doctrine  and  policy,  which 
controlled  the  final  decision  of  the  coui't — were 
passed  in  1833,  and  1854.  {Vide  Sess.  Laws  of 
1833,  chap.  281,  and  of  1854,  chap.  400.)  By  the 
former  act,  it  is  provided,  that, 

"  No  person  shall  hereafter  transact  business 
"  in  the  name  of  a  partner  (qu.  person),  not 
"  interested  in  his  firm  —  and  where  the  desig- 
"  nation  '  and  company '  or  '  co.,'  is  used,  it 
"  shall  represent  an  actual  partner  or  partners." 

The  act  of  1854  provides  that  a  partnership 
name  of  firms  having-  business  relations  with 
foreign  countries,  may  be  continued  by  some 
or  any  of  the  co-partners,  their  assignees  or 
appointees,  provided,  a  certificate  of  the  fact  is 
filed  in  the  office  of  the  county  clerk,  and  publica- 
tion of  the  same  be  made,  as  prescribed. 

The  learned  court  considers  that  the  principle 
and  pm^pose  of  these  statutes,  in  accordance  with 
the  provisions  of  the  French  law  "  involve  or  war- 


68  THE    LAW    OF 

rant  the  proposition  that  the  naked  sale  of  the 
"good  will"  of  a  business  does  not  transfer  a  right 
to  the  use  of  the  vendor's  name  or  trade  mark," 
and  the  injunction  is  ordered  against  the  defendant, 
in  affirmance  of  the  judgment  below. 

The  learned  judge  who  gave  the  dissenting  opin- 
ion in  this  case,  considers  the  name  "Howe's 
Bakery"  as  a  trades  mark  simply — and  that,  as 
such,  it  passed  by  the  assignment  and  transfer  of 
the  "good  will"  it  being  "if  not  the  thing  itself, 
an  integral  part  of  the  thing."  That  the  statute 
invoked  by  the  majoiity  of  the  court,  was  inappli- 
cable to  the  case — the  purpose  of  that,  being  "to 
prevent  the  miscliief  resulting  from  the  fraudulent 
use  of  a  fictitious  designation — or  the  word  'Co.' 
with  no  physical  existence  to  represent  it."  That 
the  name  "HoAve"  had  a  physical  existence  to 
represent  it — and  was  therefore  not  fictitious. 
That,  as  a  trade  mark,  it  was  wholly  immaterial 
whether  it  represented  a  real  person,  or  was  entirely 
fictitious  and  fanciful — and  that,  even  if  the  stat- 
ute were  applicable,  the  plaintiff,  by  his  agreement, 
had  placed  it  out  of  his  power  to  avail  of  it,  and 
did  not  attempt  to  do  so  at  the  trial. 

To  this  last  suggestion  of  the  dissenting  judge, 
it  may  undoubtedly  be  answered,  that  it  is  not 
competent  for  a  party,  by  agreement,  to  prevent  the 


TRADE   MARKS.  69 

operation  of  a  general  prohibitory  statute  —  and 
tliat,  if  tlic  provisions  of  such  statute  be  indeed 
apphcable,  it  is  the  duty  of  a  court  of  equity  to 
enforce  them  by  its  decision,  Avhether  parties  see 
fit  to  disregard  them,  or  not,  in  their  pleadings  or 
arguments. 

When  the  learned  judge  speaks  of  the  sign  in 
question  "Howe's  Bakery"  —  as  a  trade  mark — he 
undoubtedly  intends,  that  it  has  this  essential  fea- 
ture of  a  trade  mark — that  it  is  not  used  to  give 
2i  personal  credit — but  as  the  designation  merely  of 
an  establishment. 

In  this  sense,  it  bears  such  an  analogy  to  a  trade 
mark,  (which  is  a  designation  of  a  thing,  under 
which  it  is  bought  and  sold  in  the  market,)  as  tends 
to  show  the  inapplicability  of  the  statute  provisions 
to  the  use  of  such  a  name,  in  the  manner  in  which 
it  was  used  by  the  defendant. 

But,  it  seems  to  us,  that  the  entire  inapplicability 
of  the  provisions  of  the  statute,  to  the  case  in  ques- 
tion, results — not  from  regarding  the  name  used, 
as  a  trade  mark — or  analogous  to  a  trade  mark — 
but  from  a  consideration  of  the  true  and  only 
policy  of  the  statute  itself. 

That  policy,  obviously,  is,  to  prevent  parties 
from  obtaining  a  personal  pecuniary  credit  upon  a 
false  basis — or  fictitious  representation.     To  pre- 


70  THE  LAW    OF 

vent  A.  who  has  no  partner  in  business,  from 
obtaining  that  additional  pecuniary  credit  which 
might  result  from  his  having  a  partner,  by  the  use 
of  the  words  "  &  company,"  or  "  Co." —  and  to  pre- 
vent parties  from  using  the  names  of  any  persons, 
as  partners  in  their  business,  who  have  no  connec- 
tion with  it — whether  fictitious  or  real,  and  whether 
alive  or  dead,  and  thus  falsely  represent  that  the 
pecuniary  credit  and  responsibility  of  another,  is 
embarked  in,  and  pledged  for,  the  obhgations  of 
the  concern. 

Had  the  defendant  in  this  action  used  the  name 
of  Howe,  the  plaintiff,  for  any  such  purpose,  or 
if  its  use  by  the  defendant,  as  he  used  it,  could 
have  involved  any  such  result,  then,  the  provisions 
of  the  statute  would  be  applicable,  wholly  regard- 
less of  any  agreement  of  the  parties. 

An  express  agreement  by  the  plaintiff,  that  the 
defendant  might  use  his  name,  as  that  of  a  person 
connected  with  his  business — for  the  purpose  of 
enlarging  his  pecuniary  credit  in  its  operations — 
would  be  void,  as  within  the  terms  of  the  statute 
prohibition.  But,  it  certainly  does  not  appear  from 
the  case,  that  the  defendant  used  the  name  or  sign 
"Howe's  Bakery"  for  any  such  purpose — or  for 
any  other  purpose  than  to  impart  a  credit  or  value 
to  the  things  sold  by  him  in,  or  from,  his  establish- 


TRADE    MARKS.  71 

ment,  called  by  that  name — a  reputation  for  his 
bread  and  cream  cakes — which  bears  no  resem- 
blance whatever  to  that  pecuniary  credit  that  ena- 
bles him  to  buy  flom-  and  sugar.  This  personal 
credit,  when  reared  upon  a  fictitious  basis,  operates 
as  an  imposition  upon  the  public.  It  is  invisible 
and  intangible ; — but  the  credit  which  is  attached  to 
the  thing — because  sold  under  a  certain  name,  espe- 
cially when  the  thing  is  of  such  a  nature  that  its 
merits  or  demerits  are  patent — and  daily  appeal- 
ing to  the  senses  of  the  public,  cannot,  as  we  think, 
be  properly  regarded  as  coming  within  the  policy 
of  the  statute  provisions.  The  public,  certainly, 
needs  no  protection  against  attempts  of  parties  to 
establish  such  a  credit  by  the  use  of  any  name 
whatever. 


It  is  not  within  the  original  design  of  this  treatise 
to  review  the  decisions  in  the  law  of  trade  marks 
of  any  other  courts  than  those  of  England  and  the 
United  States. 

But  a  departure  from  this  design,  in  a  single 
instance,  is  suggested  by  the  citation  made  by  the 


72  THE   LAW   OF 

learned  court  in  tlie  preceding  case  of  Hoive  vs. 
Searing,  of  the  21st  article  of  the  Code  de  Com- 
merce, of  France,  and  the  commentaries  upon  the 
Civil  Law — by  M.  Troplong — as  containing  an 
exposition  of  the  policy,  based  upon  a  high  mer- 
cantile morality,  whicli,  it  was  conceived,  the 
statute  of  New  York  was  designed  to  enforce — 
and  which  controled  the  decision  of  the  court  in 
that  case. 

The  case  of  Compere  vs.  Bajou  et  als — came 
before  the  "Tribunal  of  Commerce"  of  Paris,  and 
on  appeal  from  that  court,  before  the  learned 
judges  of  the  "Imperial  Com't  of  Appeals  of 
Paris"  in  the  year  1854 — and  is  case  8th  in  vol. 
140  of  the  Court  of  Appeals  Decisions,  registered 
at  Paris — June  16th,  1854.  m 

The  circumstances  of  this  case,  are,  in  many 
respects,  so  strikingly  analogous  to  those  of  the 
case  of  Howe  vs.  Searing,  and  the  case  is,  in  itself, 
so  interesting  in  character  and  suggestiveness,  that 
we  are  induced  to  give  a  translation  of  the  judg- 
ments of  the  respective  courts  in  full. 

In  view  of  the  conclusions  in  this  case,  it  is 
manifest  that  the  learned  judges  in  France,  cannot 
consider  the  prohibition  contained  in  the  21st 
article  of  the  Commercial  Code,  or  the  commenta- 
ries of    M.   Troplong    upon   the   policy    of   that 


TRADE  MARKS.  75 

proliibition — as  at  all  applicable  to  a  case  like  that 
of  Howe  vs.  Searing. 

No  previous  recital  of  the  facts  is  necessary,  as 
they  are  sufficiently  set  forth  in  the  judgments  of 
the  Courts. 

"  Ernest  Compere^  Glovemaker,  of  Paris^  vs.  Bujou^ 
"  landholder — late  glovemaker,  of  Grenoble  — 
"  iipon  the  claim  for  the  suppression  of  the  manu- 
''''  factarer' s  mark." 

Judgment  of  the  Tribaual  of  Commerce  made  February 
6th,  1854. 

*'  Whereas,  In  April,  1841  —  the  defendant, 
"  Bajou,  assigned  to  the  defendant,  Morel,  for  a 
"  price  agreed  upon,  and  paid,  his  business  as  a 
"  glovemaker — and  comprised  in  that  assign- 
"  ment,  not  only  the  fabrication  and  the 
"  accessories  used  in  carrying  on  the  said 
"  business,  but  also  the  good  will  tlieretc) 
"  attached. 

"  That  for  such  purpose.  Morel  was  autho- 
"  rized  by  Bajou  to  adopt,  exclusively  of  every 
"  other  poi'son,  the  description  of  successor  to 
"  Bajou,  and  to  use,  as  the  mark  for  his  gloves, 
"  the  stamp  employed  by  him  as  the  manufac- 
"  turer's  mark — being  the  fac  simile  of  his 
"  signature. 

"  It  was  also  agreed  that  Bajou  should  not 
"  have  the  right  to  establish,  to  purchase,  or  be 
"  a  partner  in,  any  manufacture  of  this  nature, 
"  either  at  Paris  or  any  other  town  in  France, 
"  with  the  exception  of  Grenoble — and,  more- 
10 


74  THE   LAW    OF 

"  ever,  that  he  might,  in  Grenoble,  only  deal  in 
"  gloves  called  '  Grenoble  manufacture,'  and 
"  marked  with  the  stamp  of  that  town. 

"  Whereas,  In  November,  1850,  after  carry - 
*'  ing  on  the  business  about  10  years.  Morel 
"  assigned  the  business  to  the  plaintiff,  Com- 
"  pere,  with  the  same  provisions  of  transfer,  as 
"  had  been  entered  into  with  him,  and  for  a 
"  much  more  considerable  price  than  that 
"  which  he  had  paid  to  Bajou,  the  business,  in 
"  the  meanwhile,  having  become  much  more 
"  important  and  extensive. 

"  Whereas,  Since  Compere  has  become  owner, 
"  Bajou,  wishing  to  exercise  the  right  reserved 
"  to  him  in  his  transfer  to  Morel,  manufactured, 
"  or  caused  to  be  manufactured,  by  the  defend- 
"  ant,  Francoz — at  Grenoble,  a  certain  quantity 
"  of  gloves,  upon  which  he  thought  he  might 
*'  stamp  his  signature,  his  former  manufacturer's 
"  mark. 

"  Whereas,  It  is  not  denied  that  the  gloves, 
"  thus  marked,  have  been  sent  to,  and  sold  in, 
"  New  York,  that  being  a  city  which  has  always 
"  been,  and  is  still  at  this  day,  a  market  for  the 
"  productions  and  manufacture  in  question, 

"  That  it  is  shown,  moreover,  that  advertise- 
"  ments  have  been  inserted  in  a  certain  number 
"  of  American  journals,  recommending  to  the 
"  public,  the  name  of  Bajou  as  being  the  cele- 
"  brated  glovemaker,  who  has  re-commenced 
"  his  business,  and  that  these  advertisements 
"  are  the  acts  of  Bajou  or  his  agents. 

"  Whereas,  Compere,  at  the  same  time  recog- 
"  nizing  Bajou's  right  to  deal  in  gloves,  called 
"  'Grenoble  manufacture,'  and  at  Grenoble, 
"  denies  that  of  affixino;  his  former  manufac- 


TRADE   MARKS.  76 

"  turer's  mark  upon  tliem,  and  of  selling  them 
"  by  virtue  of  this  mark. 

"  That  it  imports  therefore  to  determine,  what 
"  was  the  mutual  intention  of  the  parties  to  the 
"assignment  from  Bajou  to  Morel — and  the 
"  value  of  the  reservation  made  by  the  latter 
"to  deal  in  gloves,  called  'Grenoble  manu- 
"flicture,'  and  stamped  with  the  stamp  of  that 
"  town. 

"  Whereas,  It  results  from  information  col- 
"  lected  by  the  Tribunal,  that  the  manufacturer's 
"  mark  for  this  species  of  industry — the  mark 
"being  advantageously  known — is  an  indis- 
"  pensable  auxiliary  for  insuring  a  sale  —  more 
"  especially  in  America  —  that  besides,  it  is  not 
"  the  custom  at  Grenoble,  to  mark  with  one's 
"  name,  the  gloves  that  are  manufactured  there. 

"  Whereas,  In  assigning  for  a  certain  sum  his 
"  good  ivill  to  Morel,  Bajou  really  assigned  all  his 
"  right  to  the  manufacturer'' s  mark,  in  which  the 
"true  value  of  the  business  consisted  —  since 
"  it  is  upon  the  mark  that  the  custom  depended. 

"  That  it  is  in  vain  for  Bajou  now  to  pretend 
"  that  he  has  the  right  to-  apply  to  his  present 
"  manuflicture,  the  manufacturer's  mark  which 
"  he  had  assigned  to  Morel,  and  of  which  Com- 
"  pere  has  become  the  owner. 

"  That  he  would,  thereby,  not  only  seek  to 
"  resume  that  which  he  had  assigned,  and  of 
"  which  he  has  received  the  price,  but  also, 
"  would  endeavor  to  apply  for  his  own  benefit 
"  the  increased  custom  procured  by  Morel. 

"  That  it  is,  in  effect,  proved,  that  the  annual 
"  average  of  Bajou's  business  was  10,300  dozen, 
'•  and  that  of  Morel  had  risen  to  20,000  dozen." 


76  -  THE    LAW   OF 

Damages. 

"  Whereas,  Actual  injury  has  been  done  to 
"  Compere,  not  only  through  the  sales  made  by 
"  Bnjou,  under  the  maoufacturer's  mark,  which 
"  he  had  no  right  to  take,  but  also  from  the 
"  advertisements  in  the  newspapers,  above  men- 
"  tioned — that  the  Tribunal  possesses  sufficient 
*'  grounds  for  estimating  the  injury,  and  it  fixes 
"  the  same  at  6,000  francs." 

Francoz. 

"  Whe7'eas,  It  is  shown  that  Francoz  has 
"  only  acted  by  the  order,  and  for  the  account, 
"  of  Bajou,  and  that  nothing  forbade  him  to 
"  fulfd  these  orders,  that  therefore,  Compere's 
"  claim  for  damage  against  Francoz  is  un- 
"  founded,  and  Francoz  is  entitled  to  be  paid 
"  his  costs." 

Morel. 

"  Whereas,  Morel  sold  to  Compere  in  good 
"  faith,  that  which  he  had  bought  from  Bajou, 
"  that  the  act  whereof  the  latter  is  accused,  is 
"  entirely  foreign  to  Morel,  from  whence  it  fol- 
"  lows,  that  Compere  has  no  right,  as  against 
"  him — and  he  is  entitled  to  be  paid  his  costs." 

"  On  these  grounds,  the  Tribunal,  judging 
"  in  the  first  instance,  prohibits  Bajou  from 
"  employing,  in  future,  his  name,  as  a  manu- 
"  facturer's  mark,  upon  his  gloves,  and  adjudges 
"  him,  by  all  legal  means,  even  by  arrest,  con- 
"formably  to  the  laws  of  April  17th,  1832, 
"  and  December  13th,  18-18  —  to  pay  to  Com- 
*'  pere  the  sum  of  6,000  francs,  and  also  the 


TEADE  MARKS.  77 

"  expenses  —  and  Compere  is  to  pny  the  cx- 
"  proses  of  Francoz  and  Morel,  because  his 
"  claim  as  to  tbem  is  unfounded." 


"  Decree  of  the  First  Chamber  of  the  Lnperial  Court  of 
"  Appeals  of  Paris — in  the  case  o/'CoMPERE  vs. 
"  Bajou  et  ah.  —  made  and  delivered  in  the 
"  Imperial  Court,  of  Paris,  Saturday,  Jane  3cZ, 
"  1854,  at  the  Public  Audience  of  the  First  Cham- 
^^her  —  when  ivere present  and  sitting : 

M.  Delaxgle,  First  President. 
M.  De  Verges,  President. 
Messrs.  Espivant, 

Try, 

Perrat, 

De  Cheyelles,  the  Elder^  | 

Bergagxe, 

MouRRE,  >  Counselloys. 

Noel  De  Payrat, 
durantox, 
Barbou,  and 
Lexain, 

"  On  appeal  —  after  bearing  tbe  conclusions 
"  and  pleadings  of  Paillet,  Counsel  for  Bajou, 
"assisted  by  Dangin,  bis  Attorney, —  Etienne 
"Blanc,  Counsel  for  Compere,  assisted  by 
"  Arnault,  •bis  Attorney,  and  Blot  Lequesne, 
"  Counsel  for  Morel,  assisted  by  Drelon,  bis 
"  Attorney,  and  baving  deliberated  thereon, 
"  according  to  law, — tbe  court,  seeing  tbe  simi- 
"  larity,  unites  tbe  appeals  in  chief  and  tbe 
"  incidental  appeals  by  Bajou  and  Compere, 


78  THE   LAW    OF 

"  from  the  judgment  of  the  Tribunal  of  Com- 
"  merce,  of  Paris,  of  Februar_^  6th,  1854,  and 
"  allows  the  same." 

"  As  regards  the  appeal  in  chief — Adopting  the 
"  grounds  of  the  previous  judges,  and  consid- 
"  ering,  besides,  that  in  the  mutual  intention 
"  of  the  parties,  at  the  time  of  the  agreement  of 
"  the  1st  of  April,  1841,  the  right  of  placing 
"  upon  the  gloves  which  might  be  manufac- 
"  tured  in  the  future,  the  stamp  till  then  em- 
"  ployed  by  Bajou,  was  one  of  the  essential 
"  ingredients  of  the  contract. 

"  That  the  stamp,  being  the  only  means  of 
"  establishing  the  source  of  the  goods,  and  of 
"  retaining  the  custom  depending  upon  it,  has 
"  become,  by  force  of  the  circumstances,  an 
"  accessory  to  the  business  transferred  to  Morel 
"  —  that  it  can,  consequently,  be  a  matter  of 
"  assignment  to  a  second  purchaser. 

"  That  the  arrangements  adopted  by  Bajou, 
"  to  make  known  abroad  the  trade  that  he  had 
"  commenced  carrying  on  again,  have  no  other 
"  object  than  to  take  from  the  actual  owners  of 
"  the  business,  a  part  of  the  benefits  insured 
"to  them." 

"  As  regards  the  incidental  appeal — Consid- 
"  ering  that  agreements  between  merchants 
"  ought  to  be  faithfully  executed,  that  the  sum 
"  allowed  Compere  for  damages  is  not  sufficient 
"to  repair  the  injury  -v^hich  he  has  sustained, 
"  That  it  behooves,  moreover,  to  take  measures, 
"  fitting  to  prevent  the  injury  in  the  future, 
"  has  made  and  makes  void  the  appeal  and  the 
"  subject  thereof — and  as  the  damages  have 
"  only  been  fixed  at  6,000  francs,  and  as  inser- 


TRADE   MARKS.  79 

"  tioii  has  not  been  ordered — amending  as  to 
"  the  same,  adjudge  Bajou  by  all  legal  means 
"  to  pay  to  Compere  the  sum  of  10,000  francs 
"  for  damages — orders,  that  the  judgment  and 
"  this  decree  be  inserted  at  the  expense  of 
"  Bajou  in  two  French  and  two  American 
"  papers,  at  the  choice  of  Compere.  The 
"judgment  as  to  the  rest  to  take  effect. 
"  Orders  the  restitution  of  the  amount  depo- 
"  sited  on  the  incidental  appeal — adjudges 
"  Compere  in  the  amount  deposited  on  his 
"  appeal. 

"  Adjudges  Bajou  in  the  amount  deposited 
"  on  his  appeal,  and  the  expenses  towards  all 
"  the  parties,  of  which  the  settled  expenses  are 
"as  follows:  Those  caused  by  Compere  152 
"  francs  17c.  Those  caused  by  Morel  76  francs 
"  75c. — and  this  not  comprising  fees  for  quali- 
"  fying,  registration  of  original  costs,  and 
*'  service  of  the  first  decree — award  is  made  to 
"  each  as  concerns  him  to  the  attorneys  who 
"  have  required  it,  affirming  that  they  have 
''  advanced  the  same." 


There  seems  to  be  no  doubt,  that  a  right  acquired 
by  transfer,  to  the  exclusive  use  of  trade  marks  by 
which  articles  of  manufacture  have  been  designated, 


80  THE  LAW   OF 

and  under  whicli  they  have  been  bought  and  sold, 
must  be  predicated  upon  a  transfer  of  the  right  to 
manufacture  or  sell  the  article  so  designated. 

If  the  plaintiff  in  Singleton,  vs.  Bolton,  could 
have  proved  an  exclusive  right  to  the  medicine 
that  he  compounded,  by  transfer  from  Dr.  John- 
son, the  original  inventor,  it  is  obvious,  from  the 
lanofuao-e  of  Lord  Mansfield,  that  he  would  have 
been  held  entitled  to  protection  in  the  exclusive 
use  of  the  name  "  Dr.  Johnson's  Yellow  Ointment." 
And  in  the  later  case  of  Perry  vs.  Truffit,  if  the 
complainant,  who  was,  in  fact,  the  possessor  of  the 
right  to  manufacture  his  compound,  by  purchase 
of  the  secret  and  recipe  from  Leathart,  the  inven- 
tor, had  not  resorted  to  false  representations  as  to 
its  origin,  and  no  other  objections  had  existed  to 
his  right,  it  is  clear  that  Lord  Langdale  would  not 
have  denied  the  injunction. 


The  right  to  protection  in  the  exclusive  use  of 
trade  marks  may  be  acquired  by  operation  of  law, 
as  well  as  by  an  express  transfer  of  the  right  to 
manufacture  or  sell. 


TRADE  MARKS.  81 

Upon  the  decease  or  bankruptcy  of  the  party 
possessed  of  the  right,  he  who,  thereafter,  becomes 
lawfully  entitled  to  carry  on  and  continue  the 
business,  becomes  thereby,  vested  of  the  right  to 
the  exclusive  use  of  the  trade  marks  of  the  business. 

In  the  case  of  Lewis  vs.  Langdon,  7  Simons,  421, 
the  trade  mark  in  question  consisted  of  the  name 
of  the  partnership  &m.  The  partnership  had  been 
dissolved  by  the  death  of  one  of  the  two  partners, 
and  the  business  was  continued  by  the  survivor, 
with  a  new  partner — and  they  continued  the  use 
of  the  old  partnership  name  as  a  portion  of  their 
trade  mark  for  their  merchandise.  One  of  the 
executors  of  the  deceased  partner,  thereupon  com- 
menced the  same  business,  and  also  used  the  name 
of  the  old  firm  as  a  trade  mark. 

On  a  bill  filed  by  the  survivor,  with  the  new 
partner,  the  Vice-Chancellor  (Shadwell)  restrained 
the  executor,  by  injunction,  from  the  further  use  of 
the  trade  mark. 

In  Croft  vs.  Day — 7  Beav.,  84 — the  facts  were 
as  follows :  Two  persons,  the  one  named  Day, 
and  the  other,  Martin,  manufactured  an  article  of 
blacking,  put  up  in  bottles,  to  which  was  affixed  a 
label  with  their  partnership  name  ("  Day  &  Mar- 
tin,") and  their  place  of  manufacture,  ("  97  High 
n 


82  THE    LAW    OP 

Holborn.")  This  was  tlieii*  trade  mark,  under 
which  the  article  became  extensively  and  favorably- 
known.  One  of  the  partners  died,  and  the  business 
was  continued  by  the  sm-vivor,  who  continued  the 
use  of  the  same  trade  mark.  The  surviving  part- 
ner, in  his  turn,  died — and  the  business  was  con- 
tinued, with  the  use  of  the  same  trade  mark,  by 
his  executor.  Thereafterwards,  a  nephew  of  the 
testator,  the  defendant  in  the  suit,  whose  name  was 
Day,  associated  with  him,  in  partnersliip,  a  person 
named  Martin,  and  established  a  blacking  manu- 
factory, using  the  old  firm  name  as  a  portion  of 
their  trade  mark — and  also,  imitating  the  labels 
of  the  old  firm  in  such  a  manner,  as  to  the  repre- 
sented place  of  manufacture,  as  to  produce  the 
impression  that  the  new  concern  was  connected 
with  the  old  manufacture. 

Lord  Langdale,  upon  these  facts,  ordered  an 
injunction  to  issue. 

In  Hine  vs.  Lart,  10  Lond.  Jm'.  Rep.,  106,  the 
complainant  claimed  a  right  to  the  exclusive  use 
of  the  word  "Ethiopian,"  with  certain  additions,  as 
a  trade  mark — as  having  been  acquu'ed  by  them- 
selves and  a  former  partner  deceased— as  a  desig- 
nation for  black  cotton  stockings  of  their  manu- 
facture.   Objection  was  made,  among  other  things, 


TRADE   MARKS.  83 

that  the  personal  representatives  of  the  deceased 
partner,  should  have  joined  in  the  suit. 

But  the  Vice-Chancellor  (Shad well)  said: 

"  Although,  it  may  be  true  that  the  personal 
"  representatives  of  the  deceased  partner  have 
"  a  right  to  use  the  same  mark,  yet  the  com- 
"  plainants  have  sufficient  right  to  bring  for- 
"  ward  the  case,  whether  the  title  is  in  them 
"  alone,  or  jointly  with  the  representative." 

In  the  case  of  Edlestone  vs.  Vick,  23  Eng.  Law 
and  Eq.  R.,  51,  it  appeared  that  one  T.  had  pro- 
cured a  patent  for  a  method  of  making  a  solid- 
headed  pin — and  thereafterwards  manufactured 
and  sold  the  patented  article,  until  the  year  1838. 

Upon  his  packages  he  used  a  peculiar  kind  of 
pink  and  green  label,  containing  the  words  "  Pat- 
ented Pins,  exclusively  manufactured  by  T.  &  Co.," 
and  he  had  procured  engraved  plates  and  blocks  to 
be  prepared,  for  multiplying  copies  of  his  label  for 
use.  In  1838,  T.  assigned  his  patent,  together 
with  the  good  will  of  his  business,  to  S.,  who,  after 
canying  on  the  business,  using  the  same  trade 
mark,  and  the  same  character  of  labels,  until  1839, 
became  bankrupt.  The  assignees  in  banki'uptcy 
continued  the  business,  in  like  manner,  until  1841, 
when  they  made  a  sale  and  transfer  to  Edlestone 
the   complainant — and   thereafterwards,   he    con- 


84  THE    LAW  OF 

tinned  the  business,  using  the  same  label  and 
marks. 

The  defendant,  Vick,  set  up  a  manufactory  of 
the  same  article,  and  iised  an  exact  copy,  or  imita- 
tion of  the  complainant's  label  and  marks. 

It  was  held  that  the  exclusive  right  was  legally 
vested  in  the  complainant,  by  virtue  of  the  several 
assignments,  and  of  the  rights  lawfully  possessed 
by  the  assignees  in  banki'uptcy,  by  ojDcration 
of  the  bankrupt  law  —  and  the  defendant  was 
restrained  by  injunction. 

In  the  case  of  Edlestone  vs.  Vick,  another  point 
arose,  and  was  decided,  which  may  properly  be 
stated  here,  although  the  principle  involved  in  it, 
is  more  directly  connected  with  that  branch  of  the 
subject  before  considered,  relating  to  the  legal 
consequences  of  a  false  representation  contained  in 
the  manufacturer's  trade  mark. 

In  the  case  before  cited,  of  Flavel  vs.  Harrison, 
as  we  have  seen,  the  court  refused  to  extend  its 
protection  to  the  plaintiff,  against  the  manifestly 
fraudulent  practices  of  the  defendant,  because  the 
plaintiff's  trade  mark,  which  had  been  invaded, 
contained  the  false  representation  that  the  tiling 
designated  was  patented. 

In  the  case  of  Edlestone  vs.  Vick,  at  the  time  of 
the  commencement  of  the  suit,  the  patent  which 


TRADE  MARKS.  85 

liaci  been  obtained  for  the  improved  method  of 
making  sohd-headed  pins,  had  expired,  so  that  the 
label  used,  was  no  longer  literally  time. 

But  the  couii;  held,  that  inasmuch  as  a  patent 
had  existed  for  the  article,  it  was  not  such  a  fraudu- 
lent representation  as  deprived  the  complainant  of 
his  exclusive  right  to  the  trade  mark,  and  his  claim 
for  protection  against  its  invasion  was  not  thereby 
forfeited. 


CHAPTER  IV. 

Of  the  Requisite  Components  of  Trade  Marks,  to 
entitle  the  manufacturer  or  merchant  by  whom 
they  are  adopted  and  appropriated,  to  protection  in 
their  exclusive  use  as  property. 

The  general  principles  resulting  from  almost  all 
the  cases,  in  which  the  question  of  the  requisite 
characteristics  of  a  trade  mark,  has  been  consid- 
ered, are,  perhaps,  nowhere  more  clearly  or  fully 
stated,  than  by  the  learned  judge  in  the  leading 
American  case  of  The  Amoskeag  Manufacturing 
Company  vs.  Spear — 2  Sand.  S.  C.  R,  599. 


86  THE  LAW   OF 

"  Every  manufacturer  and  every  mercliant 
"for  whom  goods  are  manufactured,  has  an 
"  unquestionable  right  to  distinguish  the  goods 
"  that  he  manufactures  or  sells,  by  a  peculiar 
"  mark  or  device — in  order  that  they  may  be 
"  known  as  his — in  the  market  for  which  he 
"  intends  them,  and  that  he  may  thus  secure 
"the  profits 'that  their  superior  repute,  as  his, 
"  may  be  the  means  of  gaining. 

"  The  owner  of  an  original  trade  mark,  has 
"  an  undoubted  right  to  be  protected  in  the 
"  exclusive  use  of  all  the  marks,  forms  or  sym- 
"  bols,  that  were  appropriated,  as  designating 
"  the  true  origin  or  ownership  of  tJie  article  or 
^^ fabric  to  which  they  are  affixed — but  he  has  no 
"  right  to  an  exclusive  use  of  any  words,  letters, 
"  figures  or  symbols,  ivkich  have  no  relation  to 
"  the  origin  or  oxvnership  of  the  goods,  but  are 
"  only  meant  to  indicate  their  name  or  qucdity. 
"  He  has  no  iHght  to  appropriate  a  sign  or  sym- 
"  bol,  which  from  the  nature  of  the  fact  which 
"  it  is  used  to  signify,  others  may  employ  with 
"  equal  truth,  and  therefore  have  an  equal  right 
"  to  employ  for  the  same  purpose." 

And  again,   in   the    previously   cited    case   of 
Fetridge  v.  Wells,  the  same  learned  judge,  says : 

"  A  name  can  only  be  protected  as  a  trade 
"  mark,  lohen  it  is  used  merely  as  indicating  the 
"  true  origin  and  oionership  of  the  cirticles  offered 
'"'•for  sale.  Never — where  it  is  used  to  designate 
"  the  article  itself  and  has  become  by  adoption 
"  and  ?^se,  its  proper  appellation. 


TRADE  MARKS.  87 

In  the  case  of  Stokes  v.  Lcuidgraff,  17  Barb.,  608, 
the  Supreme  Court  of  the  State  of  New  York, 
affirms  the  same  general  principles,  in  the  following 
language : 

"  The  principle  is  well  settled,  that  a  manu- 
"  facturer,  may,  by  priority  of  appropriation, 
"  of  names,  letters,  marks  or  symbols  of  kind, 
"  to  distinguish  his  manufactures,  acquire  a  pro- 
"  perty  therein  as  a  trade  mark, 

"  In  all  cases  where  names,  signs,  marks, 
"  brands,  labels,  words  or  devices,  of  any 
"  kind,  can  be  advantageously  used  to  designate 
"  the  goods  or  property,  or  particidar  place  of 
"  business,  of  a  mamfacturer  or  a,  person  engaged 
"  in  trade,  he  may  adopt  and  use  such  as  he 
"  pleases,  which  are  adapted  to  that  end,  and  have 
"  not  been  before  appropriated." 

"  In  respect  to  words,  marks  or  devices  which 
"  do  not  denote  the  goods,  or  property,  or  particidar 
^^ place  of  business,  of  a  person,  but  only  the 
"  kind  or  quality  of  the  article  in  which  he 
"  deals,  a  different  rule  prevails.  No  property 
"  in  such  words  or  devices  can  be  acquired." 

Upon  a  careful  review  of  all  the  authorities,  it 
will  be  found  that  the  principles  thus  stated,  have 
been  so  often  expressly  affirmed  or  tacitly  recog- 
nized by  the  courts,  in  England  and  America,  that 
they  should  be  regarded  as  established  elementary 
principles  In  the  law  of  trade  marks. 

In  the  application  of  these  principles  to  particu- 


88  THE  LAW    OF 

lar  cases,  no  little  difficulty  has  oftentimes  arisen — 
and  it  is  this,  which  has  elicited  more  elaborate 
and  learned  discussion  in  the  courts,  than  any  other 
branch  of  the  subject  we  are  considering. 

If  the  reasons  which  lie  at  the  foundation  of 
these  principles,  and  which  constitute  the  true 
policy  and  pm'pose  of  the  law,  in  its  recognition 
and  protection  of  property  in  trade  marks,  are 
perfectly  appreciated  and  always  kept  in  view,  it 
cannot  be,  but  that  much,  if  not  all,  of  the  appa- 
rent embarrassment,  in  their  application  to  actual 
controversies,  would,  of  necessity,  be  avoided.  It 
may  not,  therefore,  be  unprofitable,  before  proceed- 
ing to  consider  the  several  doctrines  which  have 
been  engrafted  upon  these  fundamental  principles 
— and  the  cases  in  which  they  have  been  dis- 
cussed and  determined,  to  attempt  a  brief  state- 
ment of  those  reasons  and  a  review  of  that  policy. 


A  right  to  do  anything,  or  to  use  anything,  con- 
nected with  trade  and  commerce — to  the  exclusion 
of  all  others,  is  in  the  natm-e  of  a  monoply — and, 
whatever  may  be  the  character  of  the  right,  its 
exclusive  enjoyment,  would  seem  to  be  in  restraint 


TRADE   MARKS.  89 

of  tliat  perfect  freedom,  which  is  the  Hfe  of 
trade. 

Prior  to  the  exercise  of  the  extraordinary- 
powers  of  courts  of  equity,  for  the  protection  of 
exckisive  property  in  trade  marks,  such  were 
undoubtedly  the  views  that  were  taken  of  these 
asserted  rights. 

In  1754,  Lord  Hardwicke,  as  we  have  seen,  in 
Blanchard  vs.  Hill,  while  stating  that  he  knew  of 
no  instance  in  which  a  trader  had  been  restrained 
by  injunction,  from  using  the  marks  of  another, 
declared,  that  such  an  assertion  and  maintenance 
of  exclusive  right,  would,  in  his  opinion,  be  of 
"mischievous  consequence." 

It  is  not  a  little  singular  that  Lord  Hardwicke, 
in  enforcing  his  views,  states  what  he  obviously 
regards  as  an  extreme  case,  but  which  serves  as  a 
complete  illustration  of  the  different  policy  which 
was  very  soon  after  adopted,  and  has  ever  since 
prevailed.     He  says : 

"  An  objection  has  been  made  that  the  defen- 
"  dant  in  using  this  mark,  prejudices  the  plain- 
"  tiff,  bj  taking  away  his  customers — but  there 
"  is  no  more  weight  in  this  than  there  would 
"be  in  an  objection  to  one  inn-keeper's  setting 
"  up  the  same  sign  loith  another^ 

Nor  is  there.     But  the  policy  of  the  law  as  now 

12 


90  THE  LAW  OF 

established,  resting  upon  reasons  strictly  analogous 
to  those  which  lie  at  the  foundation  of  the  right 
of  property  in  trade  marks,  would  undoubtedly 
protect  an  inn-keeper  who  had  given  a  name  to 
his  house,  by  which  it  had  become  known  to 
travelers,  from  the  assumption  of  the  same  name 
in  the  same  town  by  another. 

In  the  case  of  Hoimrd  vs.  Henriques,  3  Sand. 
S.  C.  R.,  725 — this  precise  question  arose  in  the 
Superior  Com't  of  the  city  of  New  York,  and  that 
very  protection  was  unhesitatingly  accorded  to 
the  plaintiff  by  the  court,  predicated  upon  his  pos- 
session of  exclusive  rights,  which  Lord  Hakdwicke 
deprecated  as  a  mischievous  restraint  upon  legiti- 
mate and  honest  competition. 

The  reasons  given  by  the  learned  com't  in 
Hoivai-d  vs.  Henriques,  for  protecting  the  inn-keeper 
in  the  exclusive  right  to  the  use  of  the  name 
adopted  for  his  hotel,  bear  so  close  an  analogy  to 
those,  upon  which  exclusive  property  in  a  manu- 
facturer's trade  marks  is  recognized  and  protected — 
that  we  give  the  language  of  the  opinion : 

"Every  man,"  says  the  court, "  may,  and  ought 
"  to  be  permitted,  to  pursue  a  lawful  calling 
"  in  his  own  way,  provided  he  does  not  encroach 
"  upon  the  rights  of  his  neighbors,  or  the  pub- 
"  lie  good.  But  he  must  not,  by  any  deceitful 
"  or  other  practice,  impose  upon  the  public  — 


TRADE   MARKS.  91 

"and  he  must  not,  by  dressing  himself  in 
"another  man's  garments,  and  by  assuming 
"another  man's  name,  endeavor  to  deprive 
"  that  man  of  his  own  individuality,  and  thus 
"  despoil  him  of  the  gains,  to  which,  by  his 
"  industry  and  skill,  he  is  fairly  entitled.  To 
"  make  the  application.  K  a  man  has,  by  close 
"  attention  to  the  comfort  of  his  guests,  and  by 
"  superior  energy,  made  his  hotel  desirable  for 
"  the  traveler,  and  caused  its  name  to  become 
"popular  throughout  the  land,  another  man 
"  ought  not  to  be  permitted  to  assume  the 
"same  name,  in  the  same  town — and  thus 
"  deprive  him  who  first  appropriated  the  name, 
"  of  some  portion  of  the  fruits  of  that  good 
"  will,  which  honestly  belong  to  him  alone." 

The  case  of  Marsh  vs.  Billings,  7  Cushmg,  322, 
is  analogous  in  principle  to  that  of  Hoicard  vs. 
Henriques. 

In  the  case  of  Marsh  vs.  Billings,  decided  in  the 
Supreme  Court  of  Massachusetts,  the  plaintiff  had 
entered  into  a  contract 'with  Paran  Stevens,  the 
proprietor  of  a  public  hotel  in  the  city  of  Boston, 
called  the  "  Revere  House,"  by  wliicli  the  plaintiff 
agreed  to  keep  good  horses  and  carriages  at  the 
several  railroad  stations,  on  the  amval  of  certain 
trains  of  cars,  for  the  carriage  of  passengers  with 
their  baggage  to  the  "Revere  House" — and  in 
consideration  of  his  doing  this,  Stevens  agi-eed  that 
the  plaintiff's  carriages,    should   bo  employed   in 


92  THE    LAW   OF 

transporting  travelers  from  the  "Revere  House" 
to  such  stations  or  elsewhere. 

By  this  contract,  the  plaintiff  was  authorized  to 
put  the  name  "Revere  House"  upon  his  carnages  — 
and  also  a  badge  or  label,  containing  that  name, 
upon  the  caps  of  his  di'ivers  and  porters. 

A  similar  agreement  had  previously  been  made 
between  Stevens  and  the  defendant  Billings — but 
had  been  terminated  by  mutual  consent, — notwith- 
standing which,  the  defendant  continued  the  use  of 
the  words  "Revere  House"  on  his  coaches,  and  on 
the  badges  upon  his  drivers'  caps — and  caused  his 
di'ivers  to  call  "Revere  House"  on  the  an-ival  of  a 
passenger  ti'ain  of  cars  at  the  stations,  and  thus 
divert  passengers  from  the  plaintiff's  coaches  to 
his. 

It  was  held,  upon  these  facts,  that  by  virtue  of 
his  subsisting  agreement  with  the  proprietors  of 
the  hotel,  the  plaintiff  had  an  exclusive  right  to  use 
the  name  "Revere  House,"  upon  his  coaches,  and 
upon  the  caps  and  persons  of  his  drivers — for  the 
pm'pose  of  indicating  that  he  possessed  the  confi- 
dence, and  was  entitled  to  the  patronage,  of  the 
house,  and  that  the  use  of  that  name  by  the 
defendant,  was  a  \aolation  of  the  plaintiff's  rights, 
by  fraudulently  holding  himself  out  to  be  possessed 
of  that  confidence,  and  entitled  to  that  patronage 


TRADE  MARKS.  93 

— and  that  an  action  would  lie  in  such  case, 
without  proof  of  any  special  damage. 

The  same  question,  upon  substantially  similar 
facts,  in  relation  to  a  hotel  in  the  city  of  New  York, 
known  as  the  "  New  York  Hotel,"  came  before  the 
Superior  Court,  of  that  city,  and  was  in  like  man- 
ner disposed  of  by  that  court. 

No  appeal,  in  this  case,  was  taken  from  the  order 
allowing  the  injunction  prayed  for — and  the  case 
is  not  reported. 

Upon  the  same  grounds,  similar  protection  has 
been  extended  to  the  proprietors  of  places  of  public 
amusement —  Christy  vs.  Murphy,  12  How.  Pr.  R., 
77 — and  to  the  publishers  of  newspapers  and 
magazines. 

In  the  case  of  Hogg  vs.  Kirhy,  2  Ves.,  226,  Lord 
Eldon  did  not  doubt  that  the  publication,  by  the 
defendant,  of  what,  upon  its  face,  pm'ported  to  be 
a  continuation  of  the  magazine  of  the  plaintiff,  was 
such  a  fraud  upon  the  good  will  of  that  periodical 
work,  as  to  call  for  the  interference  of  a  Court  of 
Chancery. 

The  same  doctrine  was  held  by  Vice-Chancellor 
Sandford  in  Snowden  vs.  A^oah,  Hopkins,  347, — 
and  by  Chancellor  AValworth,  in  Bell  vs.  Locke, 
8  Paige,  74. 


94  THE   LAW    OF 

Altliough,  in  the  last  two  cases,  the  injunction 
prayed  for  was  denied — it  was  upon  the  ground 
that,  to  entitle  a"  complainant,  the  publisher  of  a 
newspaper,  the  name  of  which  has  been  assumed 
by  another,  to  the  inteqDosition  of  a  Com-t  of  Chan- 
cery, it  must  appear,  beyond  reasonable  doubt, 
that  the  name  of  the  paper  is  used  in  such  a 
manner,  as  is  calculated  to  deceive  or  mislead  the 
public,  and  to  induce  them  to  suppose  that  the 
paper  printed  by  the  defendant,  is  the  same  as  that 
which  was  previously  being  published  by  the 
complainant,  and  thus  to  injm-e  its  chculation  and 
patronage. 

(See  also,  Spottiswood  vs.  Clark,  10  Lond.  Jur. 
Rep.,  1043  —  "The  Family  Pictorial  Almanac 
case"  —  decided  by  Lord  Cottenham.) 

In  the  case  of  Knott  vs.  Morgan,  2  Keen's  Rep., 
213 — the  like  protection  was  accorded  by  the 
Master  of  the  Rolls,  to  the  proprietors  of  a  line  of 
omnibuses,  to  restrain  the  defendants  from  running 
omnibuses  upon  the  same  route,  having,  painted 
upon  them,  the  like  names,  words  and  devices,  in 
the  like  colors,  as  those  used  by  the  plaintiffs,  upon 
their  omnibuses,  with  the  manifest  intention  of 
obtaining  a  portion  of  the  patronage  which  the 
plaintiffs  had  acquired — and  thus  by  a  deception 


TRADE    MARKS.  95 

of  the  public — invading  the  good  will  of  the  plain- 
tiff's business. 

The  decision  of  the  master  of  the  Rolls  (Lord 
Langdale),  was  affirmed  by  the  Chancellor  (Lord 
Cottenham),  on  appeal. 

No  just  reason  can  be  assigned  why,  upon 
similar  grounds,  this  salutary  protection  should 
not  be  extended,  in  like  manner,  to  every  business 
and  occupation  that  is  not  positively  immoral  in  its 
character,  or  vicious  in  its  tendency. 

Thus,  we  perceive — that  the  modern  doctrine, 
altogether  repudiating  the  rigid  rule  of  the  old 
law,  which  withheld  protection  to  property  in 
trade  marks,  in  the  apprehension  of  mischievous 
consequences  resulting  from  a  restraint  upon  the 
freedom  of  trade,  is  founded  upon  the  assertion 
that  such  protection  directly  produces  and  encour- 
ages that  salutary  competition,  by  which  the  best 
interests  of  the  public  are  insured — by  the  stimu- 
lation of  efforts  for  the  attainment  of  excellence, 
in  the  certainty  of  their  being  met  by  an  adequate 
remuneration. 

Firmly  established  as  is  the  doctrine  which  rec- 
ognizes and  protects  property  in  trade  marks,  and 
resting,  as  it  does,  upon  the  soundest  principles  of 
public  policy,  and  a  just  appreciation  of  individual 


96  THE  LAW  OF 

right — it  should,  nevertheless,  be  borne  in  mind, 
that  it  is  a  doctrine  which  maintains  the  existence 
of  a  right  in  one,  to  the  exclusion  of  all  others — 
and  therefore,  is  a  docti'ine,  which,  from  its  very- 
nature,  should  be  applied  with  the  extremest 
caution,  so  that  its  application  shall  never  involve  a 
violation  of,  or  departure  from,  the  principles  upon 
which  it  is  founded. 

An  incautious  application  of  the  doctrine,  by 
which,  is  intended,  such  an  application  as  departs 
from  the  precise  purpose  of  the  law,  and  the 
true  policy  which  has  induced  its  provisions — 
must  directly  and  inevitably  lead  to  a  trans- 
gression of  those  limits  prescribed  by  a  just 
regard  to  personal  rights  and  public  interests — 
and  to  the  creation  of  monopolies  which  are  alike 
injurious  to  individuals,  and  prejudicial  to  the  com- 
munity. 

Tliroughout  the  judicial  discussions,  in  the  nume- 
rous cases  that  are  reported,  and  which  may  be 
said  to  constitute  the  body  of  the  law  of  trade 
marks,  whatever  may  have  been  the  differences  of 
conclusion,  upon  questions  of  application,  a  most 
perfect  uniformity  of  sentiment  will  be  found  to 
prevail  as  to  the  true  purpose  and  fundamental 
policy  of  the  law. 

It  is  invariably   declared  that  the  law  recog- 


TRADE   MARKS.  97 

nizes  and  protects  an  exclusive  right  in  the  use  of 
trade  marks,  as  property. 

First  —  That  the  honest,  skilful  and  industrious 
manufacturer,  or  enterprising  merchant — who 
has  produced  or  brought  into  the  market,  an 
article  of  use,  or  consumption,  that  has  found 
favor  with  the  public — and  who,  by  affixing 
to  it  some  name,  mark,  device  or  symbol  which 
serves  to  designate  it  as  his — and  to  distinguish 
it  from  all  others,  has  furnished  his  individual 
guaranty  and  assurance  of  the  quality  and 
integrity  of  his  manufacture — shall  receive  the 
just  reward  of  his  honesty,  skUl,  industry  or 
enterprise — and  shall  in  no  manner,  and  to  no 
extent,  be  deprived  of  jthe  same,  by  another — 
who,  to  that  end,  appropriates  and  applies  to 
his  productions,  the  same,  or  a  colorable  imita- 
tion of  the  same  name,  mark,  device  or  sym- 
bol—  so  that  the  public  are,  or  may  be, 
deceived  or  misled,  into  the  purchase  of  the 
productions  of  the  one,  supposing  them  to  be 
those  of  the  other. 

Second — That  the  public  may  be  possessed  of  that 
assurance,  as  to  the  character  and  quality  of 
the  goods  that  they  purchase,  and  that  pledge 
or  guaranty  of  integrity  in  the  manufacture 
and  the  manufacturer,  which,  in  its  relation  to 
the  public,  it  is  the  duty  and  office  of  the  trade 
mark  to  provide,  and  in  no  manner  and  to  no 
extent,  be  deprived  of  that  assurance,  pledge 
and  guaranty,  by  the  assumption,  or  colorable 
imitation,  of  such  trade  mark  by  another. 


13 


98  THE    LAW  OF 

Whenever  the  question  arises,  whether  any  par- 
ticular name,  mark,  letters,  device  or  symbol  can  be 
appropriated  as  property  —  or,  rather,  whether  one 
who  adopts  such  name,  mark,  letters,  device  or 
symbol,  as  a  trade  mark  for  his  productions,  is 
entitled  to  the  protection  of  the  law  in  its  exclusive 
use — it  is  obvious  that  the  appropriate  answer 
must  depend  upon  the  determination  of  the  ques- 
tion—  whether  such  name,  mark,  letter,  device  or 
symbol,  is  used  to  designate — and  does  in  fact, 
designate  the  article  to  which  it  is  affixed,  as  the 
production  of  the  manufacturer  who  has  adopted 
it — thereby  serving  to  identify  and  distinguish  it 
from  all  others,  as  well  as  to  fmiiish  to  the  j)ublic 
that  assurance  of  origin  and  ownership  of  the 
article,  and  that  pledge  of  integrity  in  its  manu- 
facture, which  such  a  trade  mark  necessarily  carries 
with  it — or  whether — on  the  contrary,  the  name, 
mark,  letter,  device  or  symbol,  is  used  to  denote, 
and  does  in  fact,  denote,  nothing  more  than  the 
kind,  character,  or  quality  of  the  article,  or  its 
name  simply,  or  is  a  mere  offspring  of  the  fancy — 
suggesting  to  the  mind  no  idea  with  reference  to 
the  article  to  which  it  is  affixed. 

In  the  former  case,  it  is  a  trade  mark,  which  he 
who  adopts  it  as  such,  is  entitled  to  treat  as  pro- 
perty, and  to  be  secured  in  its  exclusive  use. 


TRADE    MARKS.  99 

In  the  latter  case,  it  is  a  name,  mark,  letter, 
device  or  symbol,  wliicli,  neither  declaring  the 
origin  or  ownership  of  the  article,  nor  serving,  in 
any  manner,  to  distinguish  it  as  the  2:)roduction  of 
any  particular  manufacturer — one  may  use  with 
equal  truth  and  propriety  as  another — and  there- 
fore, such  as  all  must  have  an  equal  right  to  use, — 
a  right  that  no  prior  appropriation  can  limit  or 
impair. 

It  follows,  therefore,  that  a  name,  mark,  letter, 
device  or  symbol,  adopted  as  a  designation  for 
merchandise,  must  contain  within  itself,  in  some 
form,  a  distinct  declaration  to  the  public,  that  he 
who  adopts  it,  is  the  manufacturer,  or  lawful  repre- 
sentative of  the  manufacturer  of  the  thing"  desiff- 
nated — as  a  fundamental  condition  to  the  protec- 
tion of  the  law  in  its  exclusive  use,  as  a  trade 
mark. 

Were  any  other  name  (or  whatsoever  constitutes 
the  designation)  than  such  as  complies  with  this 
condition,  recognized  as  a  legitimate  trade  mark — 
and  protected  as  exclusive  proj^erty,  the  apprehen- 
sions of  Lord  Mansfield  might  be  realized,  and 
the  operation  of  the  law  become  as  injmious,  as  it 
is  now  conceded  to  be  beneficent.  Such  recogni- 
tion and  protection,  would  almost  inevitably  lead 
to  tlie  creation  of  unjust  monopolies  in  the  sale  of 


100  THE  LAW    OF 

particular  articles  of  manufacture — as  exclusive, 
as  if  secured  by  a  patent, —  and  more  extensive, 
because  subject  to  no  limitation  of  time. 

The  paramount  importance  of  this  branch  of 
the  subject,  demands  the  fullest  and  most  careful 
consideration. 

In  the  case  of  The  Collins  Co.  vs.  Cowen  (before 
cited),  the  learned  Vice-Chancellor  (Wood)  show- 
ing- the  nicest  apprehension  of  the  true  character  of 
trade  mark  property — says — after  repudiating  the 
doctrine  of  property  in  an  abstract  name,  used  as 
a  designation: 

"  The  rights  of  property  in  trade  marks, 
"  can  be  said  to  exist  only,  and  can  be  tested 
"  only,  by  its  violation." 

And  what  is  its  violation  1 

When  A.  adopts  or  imitates,  and  applies  to 
articles  of  his  manufacture,  the  name  or  mark  pre- 
\dously  used  by  B.  as  a  designation  for  his  pro- 
ductions— the  wrong  consists,  in  the  sale  by  A.  of 
his  goods,  as  and  for  the  goods  of  B.  But  if  the 
name  or  mark  used  by  B.  in  no  manner  serves  to 
indicate  the  origin  or  ownership  of  his  productions 
— and  does  not  expressly  or  impliedly  declare 
them  to  be  his — it  is  obvious  that  A.  in  imitating 
such  name  upon  his  productions,  does  not  represent 
them  to  be  those  of  B.  —  and  therefore.,  whatever 


TRADE    MARKS.  101 

may  be  the  moral  tm-pitude  of  the  act  of  A.,  he  has 
yet  committed  no  wrong  of  which  B.  has  any  right 
to  comphiin — for  it  is  only  to  the  extent  to  which 
A.  has  falsely  represented,  either  directly  or  indi- 
rectly, that  the  goods  which  he  sells  are  those  of  B. 
that  B.  is  entitled  to  redress  in  damages  in  a  court 
of  law — or  the  protection  by  injunction  of  a  court 
of  equity. 

When,  under  a  certain  name,  mark  or  symbol, 
which  fails  altogether  to  indicate  the  manufacturer, 
certain  merchandise  has  acquired  a  favorable  repu- 
tation in  the  market — it  is  the  reputation  of  the 
goods — not  of  the  manufacturer — and  one  who 
copies  or  imitates  such  a  name,  thereby,  falsely 
represents  that  his  goods  are  those  which  have 
acquired  such  reputation — not  that  they  are  those 
of  any  particular  manufacturer. 

He  does  not  assail  the  reputation  of  him  who 
originally  adopted  the  name,  because,  by  refusing 
to  adopt  such  a  name  as  designates  the  merchan- 
dise as  his,  he  has  declined  to  connect  his  reputa- 
tion with  it. 

He  does  not  deprive  him  of  his  lawful  gains — 
because  such  gains,  predicated  upon  the  trade 
mark,  can  be  justly  claimed  by  hun  alone,  who  has 
given  to  the  public  an  assurance  and  guaranty  of 
the  quality  and  continued  integrity  of  his  manu- 


102  THE   LAW  OF 

facture,  by  a  trade  mark  which  discloses  its  true 
origin  and  ownership. 

Where  the  trade  mark  fails  to  do  this,  the  public 
is  as  much  exposed  to  imposition  from  the  sale  of 
a  spurious  and  inferior  article  by  the  original 
manufacturer,  as  by  another  who  has  copied  or 
imitated  the  name. 

These  considerations,  connected  with  the  univer- 
sally conceded  purpose  and  policy  of  the  law, 
disclose  the  principles  upon  which  the  jurisdiction 
of  the  court  is  rested,  in  the  protection  of  property 
in  trade  marks.  A  thorough  and  just  appreciation 
of  these  principles  is  essential  to  their  salutary 
application,  in  the  exercise  of  such  jurisdiction, 
within  the  limits  prescribed  by  that  purpose  and 
policy. 

The  simplest  case  of  a  trade  mark  fulfilling  the 
condition  of  the  law,  and  thereby  entitling  him 
who  adopts  it,  to  protection  in  its  exclusive  use,  is, 
the  name  and  address  of  the  manufactm*er. 

It  is  precisely  to  the  extent  that  any  name, 
device  or  symbol,  adopted  as  a  designation  for 
merchandise,  is  effectual  in  performing  the  office 
of  the  name  and  address  of  the  manufacturer,  that 
it  complies  with  the  essential  requisite  to  the  acqui- 
sition of  an  exclusive  right  to  its  use. 

In  the  large  majority  of  the  reported  cases  of 


TRADE  MARKS.  103 

controversies  concerning  trade  marks,  the  name  of 
the  manufacturer  or  originator  of  the  trade  mark 
m  question,  has  entered  into  its  composition.  In 
such  cases,  and  so  far  as  relates  to  that  portion  of 
the  trade  mark — and  in  all  cases  in  -which  the 
manufacturer's  name  and  address  constitute  the 
entire  designation,  no  question  as  to  the  right  to 
exclusive  use  can  arise  —  except  in  those  rare 
instances,  in  which,  even  such  name  has  been 
deceptively  and  fraudulently  adopted — or  in  those 
still  rarer  cases,  in  which  the  name  of  the  manu- 
facturer of  the  article,  has,  by  long  use,  become  the 
actual  name  of  the  thing  itself — by  which  alone 
it  is  known — and  has  therefore  altogether  ceased 
to  perform  the  office  of  designating  the  manu- 
factm'er. 

These  rare  exceptions  of  either  character,  serve 
to  elucidate  and  enforce  the  rule. 

The  case  of  Sykes  vs.  Sykes,  3  B.  &  C,  541,  is 
an  instance  of  the  fraudulent  use  by  a  manufac- 
turer, of  his  own  name. 

The  plaintiff  was  a  manufacturer  of  a  peculiai* 
character  of  shot  belt  and  powder  flask — for  which 
he  had  attempted  to  obtain  a  patent,  but  failed  by 
reason  of  some  defect  in  his  specification  or  claim. 
As  a  distinguishing  mark  for  his  productions,  he 


104  THE   LAW  OF 

adopted  and  used  his   siu-name,  with  the  word 
"patent"  added— thus,  "  Sykes'  Patent." 

Under  this  name  the  article  became  favorably 
known  in  the  market,  and  large  profits  resulted 
from  an  extensive  sale. 

(The  objection,  which,  we  have  seen,  was  fatal 
to  the  claim  of  the  plaintiff,  in  the  case  of  Flavel  vs, 
Harrison — namely,  that  the  ti'ade  mark  adopted, 
implied  a  false  representation  that  the  article  desig- 
nated had  been  patented,  seems  not  to  have  been 
taken  in  this  case — though,  from  the  report  of  the 
case,  it  may  be  inferred  that  the  contrivance  of  the 
plaintiff  was  original  and  meritorious,  and  only  not 
patented  because  of  some  formal  error  in  the  appli- 
cation.) 

The  name  of  the  defendant  was  the  same  as  that 
of  the  plaintiff,  and  he  established  a  manufactory 
of  the  same  articles,  made  in  the  same  manner,  and 
adopted  his  own  name  as  a  trade  mark,  by  which 
he  commenced  their  sale. 

As  the  plaintiff  had  no  exclusive  right,  by  pat- 
ent, to  make  and  sell  the  article,  of  course,  the 
defendant  could  not  be  restrained  from  doing  the 
same — but  the  action  was  sustained,  for  the  plain- 
tiff's redress,  by  reason  of  the  fraudulent  designa- 
tion adopted  by  the  defendant. 


TRADE   MARKS.  105 

"Where  a  man,"  says  the  learned  judge  — 
(Abbott,  C.J.,) — "has  adopted  a  particular 
"  mark  for  his  goods,  in  order  to  denote  that  they 
"  are  manufactured  hy  him,  an  action  on  the  case 
"  will  lie,  against  another,  who  adopts  the  same 
"  mark  for  his  goods  (even  though  that  mark 
"  be  the  proper  name  alike  of  both  parties),  if 
"  it  be  adopted  for  the  purpose  of  denoting  that 
"  the  goods  of  the  defendant  are  manufactured 
"by  the  plaintiff — and  therefore,  for  the  pur- 
"  pose  of  selling  them,  as  and  for  the  goods  of 
"  the  plaintiff." 

The  case  of  Rodgers  vs.  Nowill,  5  Man.  Gr.  & 
Scott,  109,  presents  another  instance,  of  still  more 
manifest  fraud,  in  the  use  of  the  manufacturer's 
proper  name  as  a  designation  for  his  productions. 

The  plaintiffs  were  the  well  known  manufac- 
turers of  cutlery,  at  Sheffield,  and  among  other 
articles  of  their  manufacture,  was  a  superior  kind 
of  pen  and  pocket  knife,  that  had  attained  a  just 
and  extended  celebrity. 

Upon  the  blade  of  these  knives,  near  the  handle, 
they  caused  a  stamp  or  mark  to  be  impressed, 
representing  the  figure  of  a  crown,  with  the  letters 
V.  and  E,.  upon  either  side  of  it,  and  beneath,  the 
words,  "J.  Rodgers  and  Sons."  By  this  stamp 
or  trade  mark,  these  knives  became  known,  and 
were  sold  in  the  market. 

The  defendants  were  cutlers,  in  Sheffield,  and 

14 


106  THE   LAW    OF 

had,  in  their  emplojTnent,  a  man  named  "William 
Kodofers,  whose  father's  name  was  John — and  this 
AVilliam  had  two  brothers  in  Sheffield,  who  were 
also  cutlers.  The  defendants  employed  William, 
to  manufactm-e  an  article  of  pen  and  pocket  knife, 
similar  in  external  appearance,  to  those  made  by 
the  plaintiffs,  and  caused  the  same  stamp  or  mark 
to  be  impressed  upon  them  with  the  addition  only 
of  the  word  "  Sheffield,"  to  the  words  "  J.  Rodgers 
&  Sons." 

It  being  manifest  that  the  design  of  the  defend- 
ants, was,  to  sell  then-  goods,  as  and  for  the 
goods  of  the  plaintiffs,  it  was  held  that  the  plain- 
tiffs were  not  the  less  entitled  to  redress  for,  and 
protection  against,  such  a  wrong — because  it  was 
attempted  through  the  instrumentality  of  the  pro- 
per names  of  those  who  were  the  manufacturers 
of  the  simulated  article. 

To  the  same  effect  is  the  case  before  cited,  of 
Croft  vs.  Day — the  plaintiff  having  succeeded  to 
the  exclusive  rights  of  the  original  "  Day  &  Mar- 
tin"— and  the  defendant  being  a  descendant  or 
relative  of  Day,  of  that  firm,  and  having  associated 
with  him  a  person  of  the  name  of  Martin,  for  the 
piu'pose,  by  the  use  of  the  actual  proper  names  of 
the  parties,  as  a  designation  for  the  blacking  made 


TRADE  MARKS.  107 

by  them  to  cause  it  to  be  believed  that  their  man- 
ufactui'e  was  that  of  the  oiiginal  estabhshment. 

In  this  case,  the  fraudulent  intent  was  made  still 
more  manifest  by  an  imitation  upon  the  label, 
affixed  to  the  defendant's  bottles,  of  the  place  of 
the  original  manufacturer — "97  High  Holborn," 
which  always  appeared  upon  the  original  "Day 
&  Martin"  label 

The  case  of  Burgess  vs.  Burgess,  17  Eng.  Law 
&  Eq.  R.,  257 — is  an  illustration  of  the  rule  we 
are  considering — in  which  the  circumstances  were 
deemed  to  be  of  that  character  as  to  require  a 
modification  or  limitation  of  the  injunction  granted, 
so  as  to  allow  the  defendant  the  use  of  his  own 
name  as  a  portion  of  his  trade  mark. 

For  more  than  forty  years,  it  appeared,  that  John 
Burgess,  the  father  of  the  defendant,  Wm.  Robert 
Burgess,  had  been  engaged  in  business  as  an  "  Ital- 
ian Warehouseman"  at  107  Strand.  In  1800  he 
took  his  son,  the  plaintiff,  into  partnership — and 
they  continued  in  business,  as  partners,  at  the  same 
place,  under  the  finn  of  "  John  Burgess  &  Son," 
until  1820,  when  the  father  died.  One  chief 
article  of  their  manufacture,  was  a  certain  fish 
sauce,  which  they  called  "  Essence  of  Anchovies," 
and  it  was  sold  and  known  in  the  market  as  "  Bm-- 


108  THE  LAW  OF 

gess'  Essence  of  Anchovies" — and  those  words,  as 
their  trade  mark,  were  printed  on  the  labels  which 
were  attached  to  the  bottles  and  packages  contain- 
ing the  article. 

The  defendant,  Wm.  Harding  Bui'gess,  was  a  son 
of  the  plaintiff,  and  for  many  years  was  employed 
on  a  salary,  upon  the  business  premises  of  his 
father— 107  Strand. 

In  1851,  he  left  the  employment  of  his  father, 
and  commenced  business  on  liis  own  account,  at 
No.  36  King  "William  street — and  manufactured 
and  sold  a  fish  sauce  of  anchovies,  which  he  put  up 
and  marked  "  Burgess'  Essence  of  Anchovies." 

Over  his  door  he  caused  to  be  placed  a  printed 
sign,  containing  the  words — "W.  H.  Bm-gess,  late 
of  107  Strand" — and  on  each  side  of  his  door  he 
caused  to  be  placed  a  metal  plate,  with  the  follow- 
ing words  cut  or  engraved  thereon,  "  Burgess'  Fish 
Sauce  Warehouse — late  of  107  Strand." 

Upon  these  facts — the  learned  Vice-Chancellor 
—  (Sir  R.  T.  Kindersley)  ordered  an  injunction 
restraining  the  defendant  from  using  the  words 
"late  of  107  Strand"  —  and  also  the  words  "Bur- 
gess' Fish  Sauce  Warehouse,  late  of  107  Strand" — 
but  refused  the  injunction  prayed  for,  to  restrain 
the  defendant  from  using  the  words  "Bm'gess 
Essence  of  Anchovies." 


TRADE   MAEKS.  109 

The  plaintiff  appealed  from  that  portion  of  the 
Vice-Chancellor's  order,  which  denied  the  injunc- 
tion to  restrain  the  use  of  the  name  "Burgess"  as  a 
portion  of  the  defendant's  trade  mark,  and  on  the 
appeal,  the  Vice-Chancellor's  decree  was  affinned. 
Lord  Justice  Turner,  in  giving  the  opinion  of  the 
court,  says: 

"  It  is  clear,  no  man  can  have  any  right  to 
"  represent  his  goods  as  those  of  another — 
"  but  in  all  cases  of  this  kind,  it  must  be  made 
"  out  that  the  defendant  is  selling  his  goods 
"   as  the  goods  of  another. 

"  When  a  person  is  selling  goods  under  his 
"  own  name,  and  another  person,  not  having 
"  that  name,  is  using  it,  it  is  clear  that  he  is  so 
"  using  it  to  represent  the  goods  sold  by  him- 
"  self  as  the  goods  of  another. 

"  But  when  two  persons  have  the  same  name, 
"  it  does  not  follow,  that  because  the  defendant 
"  sells  goods  under  his  own  name,  and  it 
"  happens,  that  the  plaintiff  has  the  same 
"  name,  he  is  selling  his  goods  as  the  goods  of 
"  the  plaintiff." 

The  case  of  Thomson  vs.  Winchester,  19  Pick., 
214 — is  a  singular  instance,  illustrating  the  prin- 
ciple upon  which  a  manufacturer  is  protected  in  the 
exclusive  use  of  his  own  name  as  a  designating 
trade  mark  for  his  productions,  by  the  exception 
of  the  case,  in  which  the  name,  from  whatever 


110   '  THE    LAW    OF 

cause,  lias  ceased  to  be  a  designation,  identifying 
the  article  as  his  manufacture. 

In  the  cases  before  cited,  of  Singleton  vs.  Bolton, 
and  Canliam  vs.  Jones — we  have  seen  that  the 
names,  "  Dr.  Johnson's  Yellow  Ointment,"  and 
"  Velno's  Vegetable  Syi'up,"  were  held  to  be  no 
longer  trade  marks,  to  which  any  one  could  claim 
an  exclusive  right,  although  the  proper  names  of 
the  original  discoverers  or  compounders  of  the 
articles,  constituted  a  portion  of  the  designation — 
and  this,  for  the  reason  that  these  names  had  ceased 
to  designate  the  manufacturers  —  and  by  long  use 
had  become  the  proper  generic  name  of  the  articles 
themselves.  But  "Dr.  Johnson"  and  "Velno"  had 
then  long  been  deceased,  and  no  one  had  succeeded 
to  any  exclusive  rights  wliich  they  might  once  have 
had. 

The  case  of  Thomson  vs.  Winchester  presents  a 
singular  instance  of  the  loss  of  the  designating  or 
distinguishing  property  of  the  manufacturer's  own 
name,  to  indicate  the  origin  and  ownership  of  the 
article,  during  the  lifetime  and  business  operations 
of  the  manufacturer  himself. 

The  plaintiff  was  the  alleged  discoverer  of  a 
method  of  preparing  or  compounding  certain  medi- 
cines, possessing  certain  distinctive  qualities  and 
properties — which  he  denominated  "  Thomsonian 


TRADE  MARKS.  Ill 

Medicines."  They  were  thus  marked  and  labeled, 
upon  the  packages  in  which  he  caused  them  to  be 
put  up  and  sold  in  the  market. 

They  acquired  a  great  celebrity,  were  adopted 
by  a  certain  class  of  medical  practitioners,  and  for 
many  years  had  been  very  extensively  sold  and 
used. 

They  became  universally  known,  where  used, 
simply  as  "  Thomsonian  Medicines." 

That  became  their  proper  appellation — and  they 
had  no  other. 

No  exclusive  right  by  patent  was  ever  obtained 
by  Thomson,  the  plaintiff — so  that  the  right  to 
manufacture  his  particular  preparations  or  com- 
pounds, was  open  to  the  public. 

The  defendant  prepared,  and  put  upon  the 
market,  the  same  character  of  medicines — (though 
alleged  to  be  inferior  in  quality  to  those  of  the 
plaintiff)  — and  in  designating  them,  used  the  same 
name,  "Thomsonian  Medicines,"  upon  the  labels 
attached  to  the  packages  in  which  they  were 
contained. 

The  action  was  brought  to  recover  damages,  and 
to  try  the  title  to  the  name. 

It  was  alleged,  that  by  the  use  of  this  name,  the 
defendant  sold  his  medicines  as  and  for  the  genuine 
"Thomsonian    Medicines"    of  the   plaintiff — but 


112  THE   LAW  OF 

there  was  no  other  proof  of  this  averment  than 
such  as  arose  from  the  use  of  the  name  itself 

Upon  these  facts,  it  was  held  by  the  learned 
Chief  Justice  of  the  Supreme  Com't  of  Massachu- 
setts, (Shaw) — that  the  jury,  who  rendered  a 
verdict  for  the  defendant  in  the  court  below,  were 
correctly  instructed — that,  inasmuch  as  the  plain- 
tiff possessed  no  exclusive  right  by  patent,  to 
manufacture  and  sell  the  particular  medicines  in 
question — the  defendant  was  at  liberty  to  manu- 
facture and  sell  the  same  character  of  compound — 
and  that  if  the  term  "Thomsonian"  had  acquired 
a  generic  meaning,  descriptive  of  a  general  kind, 
quality  or  class  of  medicines,  and  the  defendant 
used  it  as  such  generic  term,  descriptive  of  the 
kind,  quality  and  class  of  medicines  that  he 
prepared,  he  had  a  right  so  to  do,  notwithstanding 
it  was  the  name  of  the  plaintiff,  and  originally 
adopted  by  him  to  designate  the  medicines  by  him 
first  prepared — provided,  he  did  not  sell  his  medi- 
cines, as  and  for  those  prepared  by  the  plaintiff. 

The  learned  judge  says : 

"  In  a  case  like  this,  if  the  plaintiff  makes  a 
"  superior  article,  and  desires  to  secure  the 
"  benefit  of  it,  he  must  be  careful  so  to  desig- 
"  nate  and  identify  himself  therewith,  as  to 
"  save  himself  and  the  public  from  mistake 
"  and  imposition." 


TRADE  MARKS.  113 

These  several  cases  of  exceptions  to  the  general 
rule — for  the  reasons  which  make  them  exceptional 
cases — serve  to  illustrate  the  character  of  the  prin- 
ciple, upon  which  the  general  rule  is  based. 

Certainly,  no  name,  or  mark,  or  symbol,  that  can 
be  devised,  more  faithfully  fulfills  the  condition  of 
designating  the  origin  and  ownership  of  the  manvi- 
factm'ed  article — than  the  name  and  address  of 
the  manufactm-er.  But  where  this  precise  name 
has  been  previously  adopted,  and  has  become 
known  as  the  brand  or  trade  mark,  for  his  produc- 
tions, of  the  particular  person  whose  name  it  is — 
if  it  be  used  by  another  person,  who  happens  to 
have  the  same  name,  as  a  designation  for  his  pro- 
ductions of  a  similar  character — it  is  obvious,  that 
by  reason  of  its  previous  adoption  and  notoriety, 
it  altogether  fails  to  distinguish  and  identify  the 
manufacture  of  the  second  party — and,  on  the 
contrary,  that  such  use  must  necessarily  operate, 
(as,  in  such  cases,  no  doubt  was  the  design,)  to 
produce  the  belief  on  the  part  of  the  public,  that 
they  are  the  productions  of  the  first  manufacturer, 
with  whose  goods  it  has  become  identified. 

So  too,  when  the  name  of  the  manufacturer,  by 
long  use,  and  the  force  of  circumstances,  becomes 
the  real  name  of  the  article,  not  only  its  proper 
and  generic,  but  its  exclusive  appellation,  it  ceases 

15 


114  THE  LAW  OF 

to  possess  that  designating  quality,  which  is  the 
fundamental  condition  of  property  in  the  name,  as 
a  trade  mark. 


By  far  the  greater  number  of  reported  cases  of 
trade  mark  controversies,  are  those  in  which  the 
designation  in  question,  is  composed,  in  part  only, 
of  the  name  and  addi'ess  of  the  manufacturer, 
the  remaining  portion,  consisting  of  words,  letters, 
forms,  figm'es,  names,  symbols  or  devices,  which,  of 
themselves,  in  no  manner  indicate  the  origin  or 
ownership  of  the  article,  and  were  not  designed  to 
do  so — but  are  expressive  of  the  character,  kind 
or  quality  of  the  thing,  or,  it  may  be,  the  name  of 
the  thing  itself,  given  it  by  the  inventor  or  disco- 
verer, as  a  new  thing — or  that  by  which  it  was 
previously  known — and  in  these  cases,  although 
such  names,  letters,  figures  or  devices,  forms  or 
colors,  do  not,  of  themselves,  point  out  the  proprie- 
tor, yet  they  may  serve  as  auxiliaries  to  that 
portion  of  the  trade  mark  which  performs  this 
office,  and  become,  as  it  were,  so  intimately  con- 
nected with  the  trade  mark,  strictly  so  called,  by 


TRADE    MARKS.  115 

mental  association,  that  an  imitation  of  such  names, 
letters,  figm-es,  colors,  forms  or  devices,  may  be 
quite  sufficient  to  enable  the  imitator  to  sell  his 
goods  as  and  for  those  of  the  owner  of  the  trade 
mark,  without  any  use  or  imitation  of  the  name  or 
address  of  the  proprietor,  or  of  that  which  serves 
the  like  purpose. 

In  these  cases,  the  application  of  the  principles 
which  must  control  the  determination  of  the  ques- 
tion, to  what  extent  protection  can  be  accorded  the 
manufactm-er  or  merchant,  in  the  exclusive  use  of 
such  trade  mark — becomes  a  matter  of  no  little 
difficulty  and  embarrassment. 

It  is,  accordingly,  in  these  cases,  that  the  law  of 
trade  marks  has  been  the  most  elaborately  dis- 
cussed, its  true  principles  developed,  and  its  purjDOse 
and  policy  defined  and  declared. 

A  careful  review  of  these  authorities,  properly 
included  within  that  chapter  of  this  work  which 
treats  of  "the  requisite  components  of  trademarks 
to  entitle  the  manufacturer  to  protection  in  their 
exclusive  use,"  embraces  the  most  important  part 
of  the  labor  of  this  treatise,  and  will  necessarily 
extend  this  subdivision  of  the  general  subject  to  a 
much  greater  length  than  that  of  any  other. 

In  this  review,  it  will  be  found,  that  the  doctrines 
established   by  the   authorities,  are  generally  in 


116  THE    LAW    OF 

perfect  harmony  with  the  settled  principles  which 
rest  upon,  and  are  referred  to,  the  true  purpose  and 
policy  of  the  law. 

Some  of  these  cases  have  already  been  cited,  in 
other  connections.  It  will  now  be  necessary  to 
consider  them  in  more  detail,  and  at  greater  length. 


THE  ENGLISH  CASES. 

In  Singleton-vs.  Bolton,  3  Doug.,  293 — the  name 
claimed  by  the  plaintiff,  as  against  the  defendant, 
who  used  it,  was,  "  Dr.  Johnson's  Yellow  Oint- 
ment." 

Althoug-h  Dr.  Johnson  was  the  orig'inal  com- 
pounder  of  the  article,  and  when  fii'st  used  by  him, 
therefore,  the  name  traly  designated  its  origin  and 
ownership — he  had  not  transmitted  or  transferred 
his  right,  and  by  long  use,  it  had  become  the  pro- 
per name  of  the  medicine. 

As  to  either  party  to  the  action,  the  name  desig- 
nated the  article  merely — which  neither  had  an 
exclusive  right  to  make  and  sell — and  did  not 


TRADE   MARKS.  117 

denote  that  it  was  made  by  either  the  one  or 
the  other,  and,  there  being-  no  evidence  that  the 
defendant  sold  his  compound  as  and  for  that  of  the 
plaintiff,  the  claim  of  the  plaintiff  to  an  exclusive 
rig-lit  to  the  use  of  the  name,  although  it  was  in 
proof  that  he  and  his  father  before  him,  had  used 
it,  exclusively,  for  years  prior  to  its  appropriation 
by  the  defendant — was  denied  by  a  nonsuit,  and 
the  nonsuit  was  affirmed  by  the  Court  of  King's 
Bench,  Lord  Mansfield  giving  the  opinion. 

In  the  case  of  Canlmm  vs.  Jones,  2  Ves.  &  Bea., 
218— the  name  in  question  was — "Velno's  Vege- 
table Syrup." 

Neither  party  claimed  any  right  from  Velno — 
who  fii'st  compounded  and  named  the  medicine — 
but  for  a  long  time,  the  plaintiff  had  been  the  sole 
manufactm'er  and  vendor  of  the  article,  by  that 
name. 

Like  the  name,  in  the  case  of  Singleton  vs. 
Bolton,  it  had  become  by  long  use,  the  proper 
appellation  of  the  medicine,  and  had  ceased  to 
indicate  its  origin  or  ownership — but  the  plaintiff 
contended,  that  his  prior  occupation,  entitled  him 
to  the  exclusive  right  to  use  the  name,  and  this  was 
the  sole  ground  of  the  equity  set  up  in  the  bill — 
a  demurrer  to  the  bill  was  sustained,  on  the  same 


118  THE    LAW  OF 

principle  which  governed  the  King's  Bench,  in  the 
case  in  Douglas. 

In  the  case  of  Terry  vs.  Triiffit,  6  Beav.,  QQ — the 
name  used  in  common,  by  the  parties,  was  "  Medi- 
cated Mexican  Balm,"  but  each  party  used  his  own 
surname,  as  a  prefix  to  the  common  appellation. 
The  rights  claimed  by  the  plaintiff,  as  we  have  seen, 
at  the  previous  citation  of  the  case,  were  denied, 
upon  proof  of  fraudulent  representations  on  his 
part — but,  in  the  opinion  given  by  the  master  of 
the  rolls,  it  was  manifestly  the  conviction  of  the 
court,  that  no  exclusive  right  could  be  acquii'ed  to 
the  use  of  the  words  in  question,  upon  the  basis  of 
a  prior  adoption  or  appropriation  —  and  that,  unless 
it  could  be  proved,  aliunde,  that  the  defendant  had 
sold  his  "  Medicated  Mexican  Balm,"  as  and  for  that 
prepared  by  the  plaintiff,  he  had  invaded  no  right 
of  the  plaintiff — that  those  words,  just  as  truly 
described  the  medicine  of  the  one  party,  as  they 
did  that  of  the  other.  That  "  Balm "  was  the 
general,  and  "  Mexican  Balm  "  the  specific  name, 
and  the  word  "  Medicated "  was  a  denotement  of 
its  quality  merely. 

In  the  case  of  Millington  vs.  Fox,  3  Myl.  &  Cr., 
313 — it  appeared  that  the  defendant  was  a  manu- 


TRADE   MARKS.  119 

facturer  of  steel,  which  he  caused  to  be  stamped 
with  the  words  "Crawley  Millington"  in  the  sup- 
position that  those  words  were  descriptive  of  that 
particular  kind  or  quality  of  steel,  and  had  become 
the  proper  name  of  the  article. 

Had  such  been  the  fact,  it  is  manifest  from  the 
lansruag-e  of  Lord  Cottenham,  that  the  case  would 
have  been  disposed  of,  upon  the  principle  which 
controlled  the  decisions  in  Douglas  and  Vesey  8^ 
Beames.  But  it  appeared,  at  the  hearing,  that  the 
name  was  that  of  the  plaintiff,  and  indicated  him, 
as  the  original  manufactm-er  of  the  kind  or  quality 
of  steel,  upon  which  it  was  stamped — and  a  per- 
petual injunction  was  therefore  granted  against  the 
defendant. 

In  Moirison  vs.  Salmon,  2  Man.  &  Gr.,  385,  the 
plaintiff  clauned  that  he  had  prepared  and  sold  for 
many  years  a  certain  medicine,  put  up  in  boxes 
and  marked  and  labeled  "Mon-ison's  Universal 
Medicine,"  and  that  under  this  name  the  medicine 
had  acquired  a  great  reputation,  with  the  public — 
and  that  the  name  identified  and  distinguished  it, 
as  his  manufactm-e. 

The  defendant  prepared  and  sold  a  medicine, 
which  he  put  up  and  marked  and  labeled  in  a 
similar  manner — using  the  same  name. 


120  THE  LAW    OF 

The  name  had  not  become  generic — and  the 
manifest  intent  of  the  defendant  was  to  pass  off 
his  medicine,  as  that  prepared  by  the  plaintiff. 

A  motion  in  aiTest  of  judgment,  upon  a  verdict 
for  the  plaintiff,  was  denied. 

The  case  of  Day  vs.  Binning,  1  Coop.  Ch.  E., 
489,  was  another  case,  growing  out  of  the  alleged 
exclusive  right  of  the  plaintiff  to  the  use  of 
the  words  or  name  "Day  &  Martin,"  and  "97 
High  Holborn"  as  a  designation  for  the  article  of 
blacking. 

It  was  disposed  of,  by  an  application  of  the 
principles  recognized  in  the  preceding  cases — as 
was  also  the  case  of  Croft  vs.  Day,  7  Bea.,  84, 
brought  to  maintain  the  same  alleged  exclusive 
rights,  and  before  cited. 

In  the  case  of  Gout  vs.  Aleplogu,  6  Bea.,  69, 
and  1  Chitty's  Gen.  Pr.,  721 — it  appeared,  that 
the  plaintiff,  Gout,  was  the  manufacturer  of 
watches,  which  he  sent  to  the  Turkish  market, 
where  they  had  acquired  a  high  reputation. 

They  had  become  known  •by  the  names  and 
devices  which  he  caused  to  be  engraved  upon  them. 
These  consisted  of  the  name  of  Gout,  in  Turkish 
characters— and    the    Turkish   word    Pessendede, 


TRADE   MAEKS.  121 

which  signifies  warranted  or  approved.  In  addition 
to  these  were  the  plaintiff's  initials  R.  G.,  and  a 
crescent  in  relief — as  also  a  sprig  and  crescent. 

The  defendant  procured  one  Parkinson,  to 
mannfactui'e  watches  for  him,  and  caused  to  he 
engraved  upon  them,  in  the  same  place  where  the 
marks  of  the  plaintiff  were  engraved  upon  his 
watches,  the  words — Ralph  Gout — and  Pessendede, 
in  Tui'kish  characters,  and  consigned  them  to  Con- 
stantinople— where  they  were  sold  as  and  for  the 
watches  of  the  plaintiff.  An  injunction  was  granted 
by  the  Vice-Chancellor,  (Shadwell,)  restraining 
Aleplogu  from  causing  to  be  made,  and  consigned 
to  Constantinople,  and  Parkinson  from  manu- 
facturing, watches — with  the  name  of  the  plaintiff 
upon  them,  in  any  form — or  any  of  the  words  or 
devices  used  by  him  upon  his  watches. 

Of  a  similar  character  is  the  case  of  Ransome  vs. 
Bentall,  3  Law  Jour.  Rep.,  N.  S.,  161. 

The  parties  were  manufactm-ers  of  ploughs — and 
those  of  the  plaintiff  having  acquired  celebrity, 
and  being  distinguished  as  his,  by  the  stamp  of 
his  name,  and  other  marks,  upon  them,  the  defend- 
ant stamped  an  imitation  of  the  plaintiff's  marks 
upon  his  plows,  with  the  design  to  pass  them  off 
as  the  manufacture  of  the  plaintiff. 

He  was  restrained  by  injunction. 

IG 


122  THE   LAW  OF 

To  the  same  effect,  were  the  recent  cases  of 
The  Collins  Co.  vs.  Broion  and  The  Collins  Co.  vs. 
Cowen — 3  Kay  and  Johns.,  423  and  428 — the 
plaintiffs  being  manufacturers  of  edge  tools  at 
Hartford  in  the  State  of  Connecticut,  upon  which 
they  stamped  their  firm  name  with  other  marks  of 
designation — and  sent  them  for  sale  in  the  English 
and  other  European  markets.  The  defendants 
manufactured  the  same  character  of  edge  tools  in 
England — and  stamped  them  with  the  same  name 
and  mark — and  sent  them  to  the  same  markets  in 
which  the  productions  of  the  plaintiff  had  acquu'ed 
celebrity. 

The  Vice-Chancellor  ("Wood),  in  an  opinion  to 
which  we  have  already  alluded,  and  to  which  we 
shall  have  occasion  again  to  refer,  ordered  an 
injunction  to  issue,  against  the  defendants. 

See  also —  Welch  vs.  Knott — 4  Kay  &  Johns., 
747  ;  Crawshay  vs.  Thompson  —  4  Man  &  Gr.,  367; 
Pierce  vs.  Franks — 10  Lond.  Ju.  Rep.,  25;  Hine 
vs.  Lart — 10  Lond.  Ju.  Rep.,  106 ;  Blofield  vs. 
Paine — 4  Barn.  &  Adol.,  410. 


TRADE   MAEKS.  123 


THE  AMERICAN  CASES. 

A  review  of  tlie  American  authorities,  in  wliicli 
the  question  has  arisen,  as  to  what  may  be  lawfully 
appropriated  to  exclusive  use,  as  a  trade  mark,  and 
as  such,  become  entitled  to  protection,  demands  a 
large  space  in  the  pages  of  a  treatise  which  is 
designed  as  an  analysis  and  digest  of  the  law. 

The  reports  of  the  judicial  discussions  in  these 
cases,  are  full  and  elaborate — and  the  student  who 
seeks  to  become  acquainted  with  the  principles 
and  policy  of  the  law  of  trade  marks,  will  freely 
acknowledge  his  paramount  indebtedness  to  the 
learned  disquisitions  of  the  American  judges — and 
chiefly  to  those  of  the  State  of  New  York,  in  whose 
com*ts,  the  most  important  cases  have  arisen. 

We  are  not  aware  that  any  case  in  the  American 
books,  will  be  found,  of  an  earlier  date  than  1844. 
In  that  year,  the  controversy  arose,  growing  out  of 
the  alleged  piracies  committed  by  various  parties 
in  the  United  States,  upon  the  rights  of  John  and 
William  Taylor,  manufacturers,  in  England,  of  a 
kind  of  thread,  which  they  denominated  "  Taylor's 
Persian  Thread,"  and   for  the  sale   of  which,  to 


124  THE  LAW   OP 

wholesale  dealers,  tliey  had  established  agencies  at 
New  York,  Boston,  Philadelphia  and  New  Orleans. 

"We  have  already  had  occasion  to  cite  the  several 
cases  in  this  litigation,  in  the  Court  of  Chancery — 
and  in  the  Court  of  Errors  of  New  York — and  in 
the  Chcuit  Court  of  the  United  States  in  Massa- 
chusetts. 

In  these  cases,  the  general  and  fundamental 
principles  of  the  law,  are  fully  considered  and 
maintained — but  they  did  not  involve  the  particu- 
lar question,  of  what  may,  and  what  may  not,  be 
appropriated  as  a  trade  mark — or,  what  must  be 
the  characteristics  of  a  designation  for  merchandise, 
to  entitle  the  manufactm^er  to  protection  in  its 
exclusive  use. 

The  same  may  be  said  of  the  case  of  Coates  vs. 
Holhrook — 2  Sand.  Ch.  R.,  586  —  which  occurred 
in  the  succeeding  year.  This  also  was  a  spool 
cotton  tln-ead  case,  the  plaintiffs  being  manufac- 
turers at  Paisley,  in  Scotland,  and  the  defendants, 
agents  of  one  Malcolm  McGregor,  of  Newark,  in 
New  Jersey,  who  manufactured  a  simulated  article 
of  cotton  thread,  and  passed  it  off  as  the  manufac- 
tm'e  of  the  plaintiffs,  by  an  imitation,  or  rather  an 
exact  copy,  of  their  trade  mark,  in  a  manner  (to 
use  the  language  of  the  Vice-Chancellor)  "too 
barefaced  to  be  questioned." 


TRADE  MARKS.  125 

The  profession  is  gi-eatly  indebted  to  the  learned 
Vice-Chancellor  (Sandford)  for  an  elaborate  note 
appended  to  his  report  of  this  case — which  is  thus 
introduced : 

''  The  great  importance  of  the  subject  of  trade 
"  marks  and  symbols,  and  the  growing  interest 
"  which  it  has  excited,  have  induced  the  author 
"  to  collect,  in  a  note,  at  the  end  of  this  case, 
"  the  recent  authorities  relative  to  this  branch 
"  of  the  law,  both  here  and  in  EngLand.  Since 
"  the  decision  of  Coates  vs.  Holbrooke  the  case 
"  of  Taylor  vs.  Carj)enter,  cited  in  the  opinion 
"  of  the  Court,  has  been  decided,  on  an  ajjpeal 
"  from  the  Chancellor's  decree,  in  our  court  of 
"  last  resort,  so  that  several  of  the  propositions 
"  held  in  the  case  of  Coates,  are  now  definitively 
"  settled  in  this  state." 

"  The  great  interest  felt  in  these  questions, 
"  by  the  manufacturing  and  commercial  world, 
"  is  illustrated  by  the  fact,  that  the  judgment 
"  of  the  Assistant  Vice-Chancellor,  in  Coates  vs. 
"  Holbrooke  was  noticed  at  some  length,  in  the 
"  London  Times,  soon  after  it  was  pronounced, 
"and  was  stated  at  large,  in  the  Liverpool 
"  newspapers." 

The  only  American  case,  besides  that  of  Taylor 
vs.  Carpenter,  included  in  the  note  of  the  learned 
Assistant  Vice-Chancellor — or  which  had  then 
arisen — is  that  of  Partridge  vs.  Menck — which 
we  have  before  cited. 


126  THE   LAW   OF 

The  subsequent  cases — we  must  now  proceed  to 
review — and  that  review  will  comprise,  of  neces- 
sity, the  greater  portion  of  our  remaining  pages. 

The  first  and  leading  case,  and  that  which 
deserves  the  most  careful  consideration,  is —  The 
Amoskeag  Manufacturing  Company  vs.  Spea?;  2 
Sand.  Sup.  Ct.  R,  599. 

The  plaintiffs  were  a  corporation,  engaged  in 
the  manufactm-e  of  cotton  goods — at  Amoskeag 
Falls,  in  the  State  of  New  Hampshire. 

The  principal  article  made  by  them,  was  a  kind 
of  cloth,  called  "tickings,"  and  by  much  care  and 
skill,  and  at  great  expense,  they  had  brought  this 
article  to  such  a  state  of  perfection,  that  the  best 
quality  had  obtained  a  high  reputation  tliroughout 
the  country. 

For  many  years  prior  to  the  commencement  of 
the  action,  they  had  used  a  printed  label,  affixed  to 
the  outside  of  each  piece  of  ticking  of  the  first 
quality  made  by  them,  for  the  pm-pose  of  desig- 
nating it  as  such — and  this  label,  contained  the 
separate  letters,  in  large  conspicuous  capitals,  A. 
C  A. — so  that  this  quality  of  tickings,  of  their 
manufactm-e,  became  commonly  known  in  the 
trade,  as  the  "  A.  C.  A.  tickings."  The  entire  label, 
consisted  of  the  following  words,  and  letters,  and 
thus  stamped — 


TRADE    MARKS.  127 

"  Amoskeag  Manufacturing  Company. 
Power  Loom. 
•Yds.— 
A.  C.  A. 

Amoskeag  Falls,  N.  H." 

The  words  were  printed  in  red  colors — the  label 
had  a  fancy  border — square  externally  and  ellipti- 
cal within — and  the  words  contained  in  the  upper 
and  lower  lines  of  the  label,  were  printed  in  a  line 
corresponding  with  the  interior  curve  of  the  border. 

It  was  averred  by  the  plaintiffs  that  the  letters 
"A.  C.  A."  were  intended  to  denote,  as  follows — 
"A.  C,"  Amoskeag  Company — and  "A"  first 
quality. 

The  defendants  were  extensive  dealers  in  domes- 
tic goods,  and  among  others,  in  an  article  of  ticking, 
manufactured  at  Lowell,  in  Massachusetts.  To  this, 
they  caused  to  be  affixed,  a  label,  and  the  same  had 
been  used  by  them  for  five  years  before  the  action 
was  brought,  corresponding  with  that  of  the  plain- 
tiffs in  size,  color,  fancy  border,  position,  general 
arrangement  and  size  of  the  letters — and  also, 
containing  in  large  capitals — the  letters  "A.  C.  A." 

The  words  of  the  defendants  were,  as  follows, 

and  thus  arranged. 

"  Lowell  Premium  Tickings. 
Power  Loom. 
Yds.— 
A.  C.  A. 

Wari'anted  Indigo  Blue^ 


128  THE   LAW  OF 

It  was  averred,  that  notwithstanding  the  dijffer- 
ence  in  the  words  of  the-  defendants'  label — its 
imitation  of  the  plaintiffs  was  so  close,  and  its 
general  resemblance  so  perfect — that,  by  means 
of  their  label,  the  defendants  had  sold,  and  were 
then  selling,  then'  tickings,  as  and  for  the  genuine 
tickings  of  the  plaintiffs'  manufacture — to  the 
great  injury  of  the  plaintiffs'  reputation,  as  well  as 
to  their  pecuniary  damage. 

A  preliminary  injunction  was  granted,  restraining 
the  defendants,  according  to  the  prayer  of  the 
complaint,  from  using  on  their  tickings,  any  label, 
such  as  that  which  they  had  used — or  any  label, 
similar  to  the  plaintiffs,  or  an  imitation  of  it — or 
having  thereon,  the  letters  "  A.  C.  A^ 

The  answer  of  the  defendants  denied  that  the  let- 
ters "A.  C.  A."  in  the  plaintiffs'  label,  were  used  to 
denote,  or  were  understood  by  the  trade,  to  denote, 
"Amoskeag  Company"  and  "fii'st  quahty" — but 
that  they  referred,  altogether,  to  the  quality  of  the 
tickings — and  it  denied  that  the  plaintiffs'  tickings 
were  known  as  the  "A.  C.  A.  tickings,"  without 
the  addition  of  the  name  or  place  of  manufac- 
ture, —  but  that  they  were  known  as  the  "  Amos- 
keag  A.  C.  A.  tickings,"  —  and  that  they  were 
known  as  the  "Amoskeag  A.  C.  A.  tickings," — in 


TRADE   MARKS.  129 

like  manner  as  their  OAvn  were  known  as  the 
"Lowell  Premium,  A.  C.  A.  tickings." 

The  answer  also  averred,  that  all  manufactm-ers 
of  tickings,  used  letters  to  denote  the  different 
qualities,  and  that,  in  every  case,  the  name  of  the 
maker,  or  place  of  manufactm*e,  was  added,  to 
enable  the  public  to  distinguish  between  articles  of 
similar  quality,  made  by  different  manufactm'ers. 

The  answer  also  denied  that  the  use  of  the 
defendants'  label  was  intended  to  enable  them  to 
sell  their  tickings,  as  those  manufactured  by  the 
plaintiffs — or  that  it  had  produced  that  result, — 
and  admitting  that  they  had  sold  their  tickings,  as 
the  genuine  "A.  C.  A.  tickings,"  they  aven-ed,  that 
it  was  always  with  the  designation  that  they  were 
"Lowell,"  and  not  "Amoskeag,"  tickings. 

Upon  these  facts  and  averments,  two  questions 
arose : 

First.  As  to  the  defendants'  imitation  of  the 
plaintiffs'  trade  mark,  otherwise  than  by  the  use 
of  the  letters  "A.  C.  A."  and 

Second.  As  to  the  use  of  those  letters. 

In  relation  to  the  first  question,  the  following  is 
stated  as  the  conclusion  of  law  of  the  court : 

"  That  an  injunction  ought  to  be  granted, 
"  whenever  the  design  of  a  person  who  imitates 
"  a  trade  mark — his  design,  either  apparent  or 
17 


130 


THE  LAW    OF 


proved, — is  to  impose  his  own  goods  upon  the 
pubhc,  as  those  of  the  owner  of  the  mark — 
and  the  imitation  is  such  that  the  success  of 
the  design  is  a  probable  or  even  a  possible 
consequence  —  and  that  an  injunction  must 
be  granted  whenever  the  public  is  in  fact 
misled,  whether  intentionally  or  otherwise, 
by  the  imitation  or  adoption  of  marks,  forms 
or  symbols,  luhich  the  party  loho  first  employed 
them^  had  a  right  to  appropriate.^'' 


Enforcing'  the  great  importance  of  the  qualifica- 
tion of  this  proposition,  contained  in  the  last  words, 
italicised — the  court  directly  proceeds  to  say  : 


"  It  must  not,  however,  be  inferred  from 
these  remarks,  that  an  injunction  ought  to  be 
granted  whenever  there  exists  such  a  resem- 
blance between  trade  marks,  as  may  induce 
a  belief  in  the  mind  of  the  public,  that  they 
belong  to,  and  designate  the  goods  of,  the 
same  trader  or  manufacturer." 

"It  is  not  enough  that  the  public  may  be 
misled,  or  has  been  misled, —  as  already  inti- 
mated, the  resemblance  must  arise  from  the 
imitation  or  adoption,  of  those  words,  marks 
or  signs,  which  the  person  who  first  employed 
them,  had  a  right  to  appropriate,  as  indicating 
the  true  origin  or  ownership  of  the  article  or 
fabric  to  which  they  are  attached  —  and  the 
resemblance,  where  it  induces  error,  and 
gives  a  title  to  relief,  must  amount  to  a  false 
representation,  express  or  implied,  designed 
or  accidental  —  of  the  same  fact.  A  trade 
mark  is  frequently  designed  to  convey  infor- 


TRADE  MARKS.  131 

"  mation  as  to  several  distinct  and  independent 
"  facts — and  tlierefore,  contains  separate  words, 
"marks  or  signs,  applicable  to  eacli  —  thus 
"  indicating,  not  only  the  origin  or  ownership 
"  of  the  article  or  fabric  to  which  it  is  attached, 
"  but  also  its  appropriate  name,  the  mode  or 
"  process  of  its  manufacture,  and  its  peculiar  or 
"  relative  quality. 

"It  is  certain,  however,  that  the  use,  by 
"  another  manufacturer,  of  the  words  or  signs, 
"  indicative  only  of  these  circumstances,  may 
"  yet  have  the  effect  of  misleading  the  public, 
"as  to  the  true  origin  of  the  goods.  But  it 
"  would  be  unreasonable  to  suppose  that  he  is 
"  therefore  precluded  from  using  them,  as  an 
"  expression  of  the  facts  which  they  really 
"  signify,  and  which  may  be  just  as  true  in 
"  relation  to  his  goods,  as  to  those  of  another. 

"  Purchasers  may  be  deceived.  They  may 
"  buy  the  goods  of  one  person  as  those  of  ano- 
"  ther ;  but  they  are  not  deceived  by  a  false 
"  representation.  They  are  deceived  because 
"  certain  words  or  signs  suggest  a  meaning  to 
"  their  minds,  which  they  do  not  in  reality  bear, 
"  and  were  not  intended  to  convey." 

Applying  these  principles  to  the  facts  of  the  case, 
as  presented,  the  question  was — whether  the 
defendants  had  imitated  that  portion  of  the  plain- 
tiffs' trade  mark,  which  they  liad  a  right  to  appro- 
priate, for  the  purpose  of  securing  their  title  as 
manufacturers,  namely,  those  parts  that  served  to 
indicate   the   tme   origin   and   ownership   of   the 


132  THE    LAW    OF 

fabric — being  all  of  tlie  label,  excepting  the  letters 
«A.  C.  A." 

Upon  this  the  court  says : 

"  Upon  comparing  the  original  trade  mark 
"  of  the  plaintiffs,  with  that  used  by  the 
"defendants,  I  fmd  it  impossible  to  doubt  — 
"  tliat  the  latter  is  a  designed,  elaborate,  imita- 
"  tion  of  the  former.  They  are  the  same  in 
"  form,  size  and  color.  It  is  only  on  a  very 
"  close  inspection,  that  the  ornamental  border 
"  can  be  at  all  distinguished. 

"  The  variations  in  the  words,  scarcely  impair- 
"  ing,  are  quite  insufficient  to  destroy,  a  general. 
"  resemblance,  that  was  calculated  to  deceive 
"  the  public,  and  by  which,  the  evidence  is 
"  abundant  and  conclusive,  to  show  that  many 
"  dealers  have  been,  in  fact,  deceived. 

"  I  cannot  escape  from  the  conviction,  that  the 
"  real  motive  of  the  defendants,  was,  an 
"  expectation  of  the  benefits  to  result  to  them- 
"  selves,  from  the  error  of  purchasers,  and  from 
"the  imposition  upon  purchasers,  that  subordi- 
"  nate  dealers  would  be  tempted  and  enabled 
"  to  practise." 

It  was  urged  by  the  defendants,  that  the  substi- 
tution in  their  label  of  the  words — "Lowell  Pre- 
mium Tickings"  for  those  of  "Amoskeag  Manu- 
factm^ing  Company"  in  that  of  the  plaintiffs, 
provided  an  effectual  security  against  the  imposition 
of  dealers  and  the  mistakes  of  pm*chasers — but 
the  court  says: 


TRADE   MARKS.  133 

"I  cannot  tliink  so — I  cannot  think  that 
"  this  security  is  provided — for,  not  only  may 
"  the  substituted  words,  as  is  proved  to  have 
*'  been  the  case,  from  their  position,  wholly 
"  escape  the  attention  of  the  purchasers,  but 
"  when  read,  they  may  not  have  the  effect  of 
"  altering  the  belief  that  the  general  resemblance 
"  of  the  labels  is  calculated  to  produce.  The 
"  words  are  exceedingly  ambiguous.  They  are 
"  not  a  declaration  that  the  tickings  are  not 
"  manufactured  by  the  plaintiffs,  but  are 
"  entirely  consistent  with  the  supposition  that 
"  they  are." 

Thus  the  first  question  is  disposed  of  by  the 
court — and  the  injunction  is  retained  as  to  every 
portion  of  the  defendant's  label — except  as  to  the 
letters  " A.  C.  A''  or  a  colorable  imitation  thereof. 

The  second  question,  namely,  that  of  the  alleged 
right  of  the  plaintiffs  to  appropriate  those  letters  in 
their  trade  mark,  so  as  to  entitle  them  to  protection 
in  their  exclusive  use, — was,  practically — the 
important  question  in  the  case. 

Applying  the  principles  before  enunciated,  to 
the  consideration  of  the  question,  its  determination 
as  the  court  says, 

"  Must  depend  upon  the  fact,  whether  the 
"  plaintiffs  have  shown  an  exclusive  right  to 
"  the  use  of  these  letters,  upon  their  own 
"  tickings — as  declaratory  of  their  right  as  man- 
"  u/adurers.    If  they  have,  the  prohibition  must 


134  THE    LAW    OF 

"  be  retained— but  if  the  letters  "A.  C.  A.," 
"  are  merely  indicative  of  the  relative  quality 
"  of  their  tickings,  it  must  be  expunged.  As 
"  the  plaintiffs  could  not  have  acquired  by 
"  their  prior  occupation,  an  exclusive  right  in 
"  the  use  of  the  words  "first  quality"  or  "super- 
"  fine,"  they  cannot  have  acquired  a  right  by 
"  similar  means  to  an  exclusive  use  of  any 
"  letters,  marks  or  other  signs,  which  are 
"  merely  a  substitute  for  the  words,  and 
"  intended  to  convey  the  same  meaning.  It  is 
"  immaterial  whether  words,  letters  or  figures, 
"  or  any  other  signs,  are  used,  if  the  single 
"  fact  which  they  are  used  to  indicate  or 
"  declare,  is  a  truth  that  other  manufacturers 
"  or  dealers  have  an  equal  right  to  express  and 
"  communicate." 

Upon  this  question  of  fact,  the  Court  then  pro- 
ceeds to  review  the  evidence,  and  arrives  at  the 
conclusion,  the  correctness  of  wliicli  cannot  be 
doubted,  that  the  letters  "A.  C.  A."  were  used  to 
designate  the  best  quality  of  tickings — that  it  was 
such  purpose  which  they  answered,  and  no  other. 

The  Cornet  then  says  : 

"  It  is  doubtless  true,  as  stated  in  the  com- 
"  plaint,  and  sworn  in  many  of  the  affidavits, 
"  that  the  tickings  of  the  plaintiff,  to  which 
"  the  letters  "  A.  C.  A."  in  their  label,  are 
"  attached — have,  for  many  years,  been  known 
"  in  the  market  as  the  "  A.  C.  A.  tickings  " — 
"  but  this  fiict,  neither  alters  the  meaning  of 
"the  letters,  nor  takes  from  others  the  right  to 


TRADE    MARKS.  135 

"  employ  tbein.  If  the  letters  designate  only 
"  the  quality  of  the  goods,  and  not  their  origin 
"  or  ownership —the  tickings  of  the  defendants, 
"  if  the  best  quality  of  those  which  they 
"sell— are,  as  truly  "A.  C.  A.  tickings"  as 
"  those  of  the  plaintiffs." 

And  the  court  thereupon  dissolved  that  portion 
of  the  injunction  which  restrained  the  defendants 
from  using  the  letters  "A.  C.  A."  in  their  labels. 

The  principles  laid  down  by  the  learned  court  in 
this  case,  may  be  regarded  as  established. 

It  is  true  that  a  partial  dissent  from  some  of  the 
conclusions,  has  been  expressed  by  a  learned  judge 
of  the  same  court,  in  a  subsequent  case,  to  which 
we  shall  have  occasion  to  refer  —  yet  they  have 
been  repeatedly  recognized  and  affirmed  in  subse- 
quent decisions,  of  the  same,  of  co-ordinate,  and  of 
appellate  tribunals — and  have  never,  as  we  are 
aware,  been  contravened  or  departed  from,  in  any 
case,  involving  circumstances  requiring  their  rejec- 
tion or  application. 

Portions  of  the  language  made  use  of  by  the 
learned  judge,  in  his  elaborate  disquisition,  have 
been  criticised,  as  inconsistent  witli  some  of  the 
conclusions — but  we  believe  it  will  be  found,  upon 
a  more  careful  study  of  the  phraseology,  that  such 
appearance  of  hiconsistency,  results  from  an  inat- 
tention to,   or  an  imperfect  appreciation   of,  the 


136  THE    LAW    OF 

force  and  sig-nificancy  of  the  qualifying  terms,  with 
which  the  language  in  question  is  always  con- 
nected. 

The  principles  which  we  consider  justly  dedu- 
cible  from  this  leading  authority,  may  thus  be 
stated : 

First — That  a  trade  mark,  adopted  by  a  manufac- 
turer or  merchant,  for  his  goods,  to  be  clothed 
with  the  attributes  of  property,  entitling  the 
appropriator  to  protection  in  its  exclusive  use, 
must,  by  word,  letter,  sign,  figure  or  symbol, 
designate  the  true  origin  or  ownership  of  the 
m  goods. 

/Second — That  where  a  trade  mark  is  violated,  the 
essence  of  the  wrong  done,  consists  in  the  sale 
of  the  goods  of  one  manufacturer,  as  and  for 
the  goods  of  another  —  and  therefore,  that  such 
violation  can  only  be  predicated  of  a  copy  or 
imitation  of  a  trade  mark,  or  those  portions  of  a 
trade  mark  which  truly  designate  the  origin  or 
ownership  of  the  goods. 

Third — That  a  similarity  between  two  trade  marks, 
used  by  different  manufacturers  for  their  goods, 
although  of  such  a  character  as  to  induce  a 
belief  in  the  mind  of  the  public,  that  they  belong 
to,  and  designate  the  goods  of  the  same  manu- 
facturer or  trader — is  not,  of  itself,  sufficient 
ground  for  a  prohibition  of  the  use  of  such 
trade  mark,  by  him  who  did  not  first  adopt  it. 
That  similarity,  to  entitle  the  originator  to  the 
protection  of  the  law,  must  be  such  as  to 
amount  to  a  false  representation,  not  alone,  that 


TRADE    MARKS.  137 

the  two  articles  have  the  same  origin,  but  that 
the  goods  to  which  the  simulated  mark  is 
attached,  are  the  manufacture  of  him  who  first 
appropriated  the  trade  mark. 

Fourth  —  That  although,  by  the  long  continued  use 

P      Lt       ^^  certain  words,  letters,  marks   or  symbols, 

^HtOA^       ^ r^^    which  do  not,  of  themselves,  and  were  not 

J  I      A  designed  to  indicate  the  origin  or  ownership 

K^CKjr  ^    y»-  '  ^£  ^j^g  goods  to  which  they  are  affixed  —  the 

•7  a^A^i-c^  "  ^^ —        goods  so  marked,  and  because  so  marked,  have 

,x   J.  -.■»-,'•''       become  known  as  those  of  the  manufacturer 

who  first  used  them,  such  fact  cannot  alter  the 

■\i  <a.r;'c-o    <^-"'  I    original  meaning  of  the  words  or  symbols,  or 

vf<^^^i^l'-~0'{o  i-^^ett.£a\kLQ,-  intent  with  which  they  were  first  used,  as 

i^  ^  «^'  ^■f«*»/*>"!'^^^*-*^^^o  *^^  name  of  the  thing,  or  its  general 

^  (^^La^IShu   ^^  relative  quality,  or  take  from  others,  the 

•y        /        /*      A/~^'^^^^  ^'^  employ  them  in  the  same  sense. 

"*"  ^"^^  *'  ^  Fifth — That  a  violation  of  a  trade  mark,  consisting 
'  Ci'^  ^^-if-f*^^  ty.  f^  q£  ^  IVj^Igg  declaration,  by  a  copy  or  imitation  of 
i^eUxi-r  those  parts  of  the  trade  mark  imitated,  which 

indicate  the  true  ori2;in  or  manufacture  of  the 
goods — it  is  not  essential  to  the  interposition 
of  judicial  restraint,  that  the  imitation  should 
be  exact  or  perfect.  Though  a  limited  and 
partial  imitation,  containing  variations,  that  a 
comparison  with  the  original  would  instantly 
disclose — it  may  yet  be  manifest,  that  a  resem- 
blance exists,  which  was  designed  to  mislead, 
and  which  has  actually  misled,  the  public,  or 
probably,  or  even  possibly,  may  do  so,  in  that 
particular  which  constitutes  the  wrong. 

Sixth — That  the  name  and  address  of  the  manufac- 
turer, used  by  him  as  a  trade  mark,  may  have 

18 


138  THE   LAW    OF 

added  to,  and  connected  with  it,  some  peculiar 
device,  vignette,  emblem,  symbols,  forms  or 
figures,  adopted  as  auxiliaries  to  the  name  and 
address,  in  declaring  the  true  origin  and  own- 
ership of  the  merchandize — an d_  a  wrongful 
viohition  of _such  a  trade  mark,  may  be  accom- 
plished, even  though  the  name  of  the  original 
manufacturer  be  omitted,  and  that  of  the  imita- 
tor be  substituted — bxsuch  an  imitation  of  the 
f  1  peculiar  device,    vignette,    emblem,    symbol, 

7'vWf(MW  form,   color   or  figure,   alone,    as   indicates   a 

j>r  urr*^  design,  and  is  calculated  to,  mislead  and  deceive 
the  public,  as  to  the  true  origin  and  ownership 
of  the  goods. 

Seventh — That  a  silent  acquiescence  by  the  manu- 
facturer, though  for  five  years'  continuance,  in 
,    an  unlawful  violation  of  his  trade  mark,  by 
'    another,  cannot  operate  as  a  surrender  of  his 
exclusive  rights. 

That  although  the  consent  of  the  manufactu- 
rer may  be  inferred,  from  his  knowledge  and 
silence,  yet  that  such  consent,  whether  express 
or  implied,  when  purely  gratuitous,  may  be, 
at  any  time  withdrawn — and  when  implied  by 
silence,  terminates  when  the  silence  terminates 
— it  being  no  more,  in  fact,  than  a  license, 
revocable  at  will. 


TRADE   MARKS.  139 


[The  statement  that  the  principles  of  law  deduci- 
ble  from  the  case  of  The  Amoskeag  Manufacturing 
Company  vs.  Spear,  have  been  recognized  and 
affirmed  by  subsequent  American  decisions,  should 
have  been  qualified,  by  the  exception  of  the  seventh 
and  last  conclusion  of  law,  in  the  order  in  which 
are  above  stated.  We  are  not  aware  that  the 
principle  involved  in  that  conclusion  has  arisen  in 
any  other  American  case,  and  it  is  certainly  not  in 
accordance  with  the  English  authorities. 

A  silent  acquiescence  in  the  use  or  imitation  of 
his  trade  mark  by  another — even  for  a  period  of 
three  or  four  months,  his  knowledge  being  proved 
or  conceded,  was  deemed  by  the  Chancellor,  in  the 
case  of  Flavel  vs.  Harrison,  (19  Eng.  Law  and  Eq. 
Rep.,  15)  —  sufficient  ground  for  withholding  equi- 
table relief  to  the  manufacturer,  until  the  establish- 
ment of  his  legal  title. 

It  is  quite  manifest,  that  the  long  acquiescent  use 
by  a  manufacturer,  of  the  trade  mark  of  another, 
may,  and  indeed  must,  inevitably  result  in  utterly 
depriving  the  trade  mark  in  question,  of  its  office 
of  designating  the  merchandise  as  that  of  the  origi- 
nal manufacturer.  When  it  ceases  to  serve  this 
purpose,  surely  he  who  was  at  first  a  wrongful 


140  THE   LAW   OF 

simulator,  cannot  be  said  to  be  longer  guilty  of  tlie 
wrong,  wliicli  consists  in  passing  off  bis  goods  as 
and  for  tbose  of  tbe  original  owner  of  tlie  trade 
mark —  and  this  being  the  sole  ground  upon  which 
a  claim  of  right  to  exclusive  use  can  be  maintained, 
to  allow  such  claim,  after  such  acquiescence,  with 
such  consequent  result,  would  seem  to  be  incon- 
sistent with  the  purpose  and  policy  of  the  law.] 


In  the  case  of  Stokes  vs.  Landgraff,  17  Barb., 
608,  decided  at  a  special  term  of  the  Supreme 
Com-t  of  New  York,  and  subsequently  affirmed  by 
a  full  bench,  the  leading  principles  involved  in  the 
case  of  The  Amoskeag  Manufacturing  Comimny  vs. 
Spear,  came  directly  under  consideration — and  the 
decision  was,  in  all  respects  an  affirmance  of,  and 
in  accordance  with,  those  principles. 

The  plaintiffs  were  glass  manufactm-ers,  at  Clyde 
village,  in  the  town  of  Galen,  and  county  of  Wayne, 
in  the  State  of  New  York.  The  defendants  were 
glass  manufactm-ers  at  Cleveland,  in  the  county  of 
Oswego. 

Upon  the  boxes  and  packages  containing  the 
glass,  manufactured  by  the  plaintiffs,  they  branded 


TRADE   MAEKS.  141 

or  stamped,  in  addition  to  their  name  and  place  of 
manufactm-e,  one  of  the  several  words,  following: 
"Galen,"  "Lake,"  "Clyde,"  "Cylinder,"  "Wayne," 
"New  York,"  —  and  the  plaintiffs  aven-ed  in  their 
complaint,  that  these  words  were  adopted  and  used, 
by  their  predecessors  and  by  themselves,  to  desig- 
nate the  several  qualities  of  the  glass  manufactured 
by  them — (that  is  to  say,  "  Galen,"  to  denote  the 
first  quality,  "  Lake,"  the  second,  "  Cylinder,"  the 
thu-d,  "  AVayne,"  the  fourth,  &c.,)  and  to  distinguish 
the  glass,  manufactured  by  the  plaintiffs,  from  that 
manufactured  hy  other  persons,  or  at  other  manufac- 
tories. 

The  complaint  fmiher  averred,  that  the  defend- 
ants manufactured  window  glass  of  an  inferior 
quality  and  value  to  that  manufactured  by  the 
plaintiffs,  and  caused  the  same  to  be  put  up  in 
boxes  and  packages,  which  they  marked  or  branded 
with  one  or  other  of  the  same  words  used  by  the 
plaintiffs,  and  "  with  intent  to  cause  it  to  be  believed 
by  purchasers,  builders  and  the  public,  that  such 
glass  was  manufactured  at  the  glass  works  belong- 
ing to  the  plaintiffs,  and  to  enable  the  defendants 
to  sell  their  glass  as  and  for  the  manufacture  of  the 
plaintiffs." 

The  answer  of  the  defendants,  while  admitting 
the  use  by  them,  upon  their  boxes  and  packages 


142  THE   LAW  OF 

of  glass,  of  the  same  words  used  by  the  plaintiffs, 
denied  that  those  words  were  used  by  the  plaintiffs, 
'^  to  distinguish  the  glass  manufactured  hy  them,  from 
that  manufactured  hy  other  persons,  or  at  other  manu- 
factories''' and  averred  that  they  were  used  by  the 
plaintiffs  and  defendants  alike,  solely  to  distinguish 
the  several  qualities  of  their  glass. 

Annexed  to  the  answer,  were  copies  of  the 
several  marks  and  brands  used  by  the  plaintiffs 
and  defendants — from  which,  it  appeared  that  the 
entire  label  or  mark  in  each,  consisted  of — 1st,  the 
name  of  the  manufacturer,  2d,  the  place  of  manu- 
facture, 3d,  the  name  or  word  denoting  the  relative 
quality,  4th,  the  size  and  5th,  the  quantity  of  glass 
contained  in  the  box  or  package. 

Thus,  the  plaintiff's — "  Stokes — Clyde,  Cylinder 
8X12  — 50  feet"  or  "Stokes,  Clyde,  Galen— 8X12 
50  feet  "—and 

Thus,  the  defendant's  —  "  Landgraffs  —  Galen, 
8X12,  50  feet"  or  Landgraffs,  Cylinder,  8X12,  50 
feet. 

It  appeared  by  the  evidence,  at  the  hearing,  that 
it  was  the  practise  of  manufacturers  of  glass,  to 
designate  the  several  qualities  by  names  similar  to 
those  used  by  the  parties  in  this  case,  and  not  by 
words,  or  figures,  expressing,  in  terms,  the  relative 
qualities. 


TRADE   MARKS.  143 

Upon  the  material  issue  made  by  the  averment 
of  the  complaint  and  denial  of  the  answer,  that 
the  words  in  question  were  used  to  designate  the 
particular  manufacture  of  the  plaintiffs,  and  to  dis- 
tinguish it  from  all  others,  the  conclusion  of  fact 
upon  the  evidence,  is  thus  stated  by  the  court — 
that, 

"  The  employment  of  those  words  is  simply 
"  to  denote  quality,  and  that  dealers  in  glass 
"  must  so  understand  it." 

The  conclusions  of  law  as  presented  in  the  case 
of  ''The  Amoskeag  Manufacturing  Comimny  in 
Spear  "  and  the  other  cases  cited  by  the  comi;,  are 
then  affirmed,  as  applicable  to  the  facts,  and  are 
thus  clearly  stated : 

"  The  principle  is  well  settled,  that  a  manu- 
"  facturermay,  by  priority  of  appropriation  of 
"  names,  letters,  marks  or  symbols  of  any  kind, 
"  to  distinguish  his  manfacture,  acquire  a  pro- 
"  perty  therein,  as  a  trade  mark  —  for  the  inva- 
"  sion  of  which  an  action  for  damages  will  lie, 
"  and  in  the  exclusive  use  of  which,  he  may 
"  have  protection,  when  necessary,  by  injunc- 
"  tion, 

"  The  wrong,  in  such  a  case,  for  which  those 
"  remedies  are  given,  consists  in  misrepresenting 
"  to  the  public,  by  the  use  of  that  trade  mark, 
*'  goods  or  wares  of  another  person,  as  having 
"  been  manufactured  by  the  true  2''i'oprietor  of 
^Uliat  mark  —  and  thereby  depriving  him,  to  a 


144  THE    LAW  OF 

"  greater  or  less  extent,  of  the  benefit  of  tlie 
"  good  will  of  his  establishment,  and  the  repu- 
"  tation  of  his  articles.  The  same  principle 
"  extends  to  all  branches  of  business,  where  the 
"  like  reason  for  its  application  exists. 

"  In  all  cases,  where  names,  signs,  marks, 
"  brands,  labels,  words  or  devices,  of  any  kind, 
"  can  be  advantageously  used,  to  designate  the 
^^  goods  or  loroperty^  or  particular  place  of  business 
^^  of  a  person^  engaged  in  trade  or  manufacture, 
"or  any  similar  business,  he  may  adopt  and 
"  use  such  as  he  pleases,  which  are  adapted  to 
"  that  end,  and  have  not  been  before  appropri- 
"  ated,  and  no  other  person,  can  lawfully 
"  imitate  them,  and  by  that  means,  sell  his  own 
"  goods  or  property,  or  carry  on  his  business, 
"  as  the  goods,  property  or  business  of  the 
"  former. 

"  In  respect  to  words,  marks  or  devices, 
"  which  do  not  denote  the  goods  or  property,  or 
'■'■  particular  place  of  business  of  a  person,  but 
"  only  the  nature,  kind  or  quality,  of  the  article 
"  in  which  he  deals,  a  different  rule  prevails — 
"  no  property  in  such  words  marks  or  devices 
"  can  be  acquired.  There  is,  obviously,  no 
"  good  reason  why  one  person  should  have 
"  any  better  right  to  use  them  than  another. 
"  They  may  be  used  by  many  different  persons, 
"  at  the  same  time,  in  their  brands,  marks  or 
"  labels,  on  their  respective  goods,  with  perfect 
"  truth  and  fairness.  They  signify  nothing, 
"  when  fairly  interpreted,  by  which  any  dealer 
"  in  a  similar  article  could  be  defrauded.  It  is 
"  possible  that  consumers  of  glass  may,  to  some 
*'  extent,  be  led  to  believe,  by  the  use  of  the 
"  words  in  the  defendant's  marks  or  brands, 


TRADE   MARKS. 


145 


that  the  boxes  or  packages  upon  which  those 
marks  or  brands  appear,  contain  glass,  manu- 
fjicturecl  at  the  plaintiff's  factory  —  but  a 
similar  deception,  might  be  produced,  by  the 
use  by  both  parties  —  of  any  words,  repre- 
senting quality  merely. 
"If  an  impression  is  derived  from  the  words 
which  was  not  intended  to  be  made  by  them, 
and  different  from  their  natural  meaning,  and 
injury  thereby  results,  it  must  be  attributed, 
solely,  to  the  practise  referred  to,  in  designat- 
ing qualities,  by  which  the  true  qualities 
must  necessarily,  to  a  considerable  extent,  be 
concealed  from  the  consumers." 


Upon  those  conclusions  of  fact  and  of  law — 
the  injunction  against  the  defendants  was  dissolved. 


The  case  of  Clark  vs.  Clark,  25  Barb.,  76,  illus- 
trates the  principle  that  an  imitation  solely,  of  tlie 
devices  and  their  arrangement,  which  are  used  in 
connection  witli  the  name  and  address  of  the  manu- 
facturer— where  the  proper  name  and  address  of 
the  imitating  manufacturer  are  substituted  for  those 
contained  in  the  original  ti*ade  mark,  may  yet  be 
such  a  fraudulent  representation  that  the  goods  of 
the  one  are  in  fact  the  manufactm^e  of  the  other, 
as  to  amount  to  an  invasion  of  the  right  of  pro- 

19 


146  THE    LAW    OF 

perty  in  the  original  proprietor,  and  demand  the 
protection  of  the  law. 

The  plaintiffs  were  manufacturers  of  cotton 
thread  at  Glasgow,  Scotland. 

This  thread  was  wound  upon  wooden  spools,  on 
the  ends  of  which  they  affixed  their  labels.  This 
label  was  adopted  by  them  as  their  trade  mark  and 
had  been  so  used  since  1843. 

The  label  consisted  of  fom'  concentric  circles — 
the  inner  one  of  gold — the  next  of  silver — the 
third,  black,  with  gold  letters,  and  the  fomlh,  of 
silver — and  the  whole  was  encircled  by  two  con- 
centric black  lines. 

In  the  inner  circle,  was  the  number  of  the  cot- 
ton— in  the  next,  were  the  name,  and  address,  of 
the  manufacturers — thus,  "J.  Clark,  Jr.,  &  Co., 
Mile  End,  Glasgow,"  the  name  being  at  the  top,  and 
the  address  being  at  the  bottom.  In  the  next 
cu'cle,  were  the  words  "Six  Cord  Cabled  Tln'ead 
— warr'd  200  yards" — and,  in  the  outer  circle, 
were  the  words  "Sole  Agent,  Wm.  WheeMght, 
New  York." 

The  defendants  were  manufactm^ers  of  the  same 
article  at  Seed  Hill,  Paisley,  in  Scotland — mider  the 
firm  of  J.  &  J.  Clark  &  Co.,  and  George  Clark, 
one  of  the  defendants,  was  then*  agent  in  New 
York.     The  label  used  by  them,  on  their  spools  of 


TRADE  MARKS.  147 

cotton  tlu'ead,  consisted  of  tlie  same  number  of 
concentric  circles,  in  the  same  colors,  aiTanged  in 
the  same  order,  with  the  same  letters  in  black  and 
ofold — the  same  number  for  the  inner  circle — their 
own  name  and  addi'ess  in  the  next  circle,  thus, — 
"Clai-k  &  Co.,  Seed  Hill,  Paisley."  The  name  at 
the  top,  and  the  address,  below — the  same  words, 
"Six  Cord  Cabled  Thread— warr'd  200  yards" 
in  the  next  circle,  precisely  as  in  the  plaintiffs  — 
black  ground  with  gold  letters  —  and  in  the  next 
circle  the  words  —  "Sole  Agent,  George  Clark, 
New  York." 

Upon  these  facts,  the  court  say,  that  it  was  the 
evident  design  of  the  defendants  so  to  prepare  their 
trade  mark,  that  all  but  the  most  cautious  customers 
would  be  misled  —  and  even  such  as  knew  that 
Wheelright  had  been  the  agent  of  the  plaintiffs, 
might  naturally  suppose  that  George  Clark  had 
been  substituted  in  his  place  ;  that  the  firm  name 
of  the  original  manufacturers  had  been  changed, 
and  that  they  either  had  two  places  of  manufac- 
ture, or  had  removed  from  Glasgow  to  Paisley. 

"  Ownership  in  his  trade  mark  is  allowed  to 
"  the  manuflicturer,"  say  the  court,  "  that  he 
"  may  have  the  exckTsive  benefit  of  the  repu- 
"  tation  which  his  skill  has  given,  to  articles 
"  made  by  him  —  and  that  no  other  person  may 


148  THE    LAW  OF 

"  be  able  to  sell  to  the  jpublic  as  his,  that  lohich  is 
"  not  his.'' 

"  An  imitcation  of  his  mark,  witli  partial 
"  differences,  such  as  tbe  public  would  not 
"  observe,  does  him  tbc  same  harm  as  the  entire 
"  counterfeit. 

"  If  the  wholesale  purchaser  most  conversant 
"  with  the  marks,  is  not  misled,  but  the  small 
"  retailer  or  consumer  is,  the  injury  is  the  same 
"  in  law,  and  differing  only  in  degree. 

"  A  right  of  action  must  exist  for  the  last,  as 
"  well  as  for  the  first. 

"  If  all  consumers  do  not  discriminate,  it 
"  would  be  indifferent,  even  to  the  wholesale 
"  buyers,  from  which  of  the  two  they  bought  — 
"  and  thus,  the  extent,  also,  of  the  injury,  would 
"  be  as  great  as  if  they,  also,  were  deceived." 

In  accordance  with  these  conckisions,  an  injunc- 
tion was  ordered — and  the  decree  of  the  special 
term  was  affirmed,  on  appeal,  by  the  full  bench. 


The  case  of  The  Brooklyn  White  Lead  Coinpany 
vs.  Masury,  25  Barb.,  416  —  decided  in  the  same 
court — illustrates  the  principle  applied  to  the  case 
of  a  fraudulent  imitation  of  a  trade  mark,  accom- 
plished by  a  false  representation  of  the  name  of 
the  imitating  manufactm-er. 


TRADE   MARKS.  149 

The  plaintiffs  were,  and  had  been  for  more  than 
twenty  years,  manufacturers  of  white  lead,  at 
Brooklyn,  in  the  State  of  New  York.  They  had  a 
store  in  the  city  of  New  York. 

As  a  mark  or  brand  upon  the  kegs  containing 
the  white  lead  of  their  manufacture,  they  used  their 
name,  "  Brooklyn  White  Lead  Company,"  with  the 
additional  words,  "  premium  lead,  warranted  pure." 

The  defendant  was  a  manufacturer  of  white  lead, 
also,  at  Brooklyn,  and  having  a  store  in  New  York 
city.  He  first  used  as  his  mark  or  brand  upon  his 
kegs,  the  words,  "  Brooklyn  White  Lead,  pure, 
100  lbs"  —  without  connecting  his  name  with  the 
brand.  To  this,  no  objection  was  made  by  the 
plaintiffs,  for  the  reason,  that  as  each  party  made 
white  lead — and  each  made  it,  also,  at  Brooklyn, 
they  had  an  equal  right  to  declare  these  facts  by 
the  use  of  the  words,  "  Brooklyn  White  Lead,"  in 
their  trade  mark.  After  some  time,  however,  the 
defendant  added  the  word  "Company"  to  the 
words  before  used,  when,  in  fact,  the  lead  of  his 
manufactm-e  was  not  made  by  a  "  Company,"  and 
there  was  no  other  "  Company  "  in  Brooklyn,  for 
the  manufacture  of  white  lead,  than  that  of  the 
plaintiffs — which  was  properly  designated  by  the 
name  used  in  their  trade  mark,  "  Brooklyn  White 
Lead  Company." 


150  THE   LAW   OF 

This,  with  extrinsic  evidence,  rendered  it  quite 
manifest,  that  the  defendant  had  added  the  word 
"  Company  "  to  his  trade  mark,  for  the  sole  purpose 
of  misleading  purchasers,  and  inducing  the  belief 
that  the  lead  contained  in  his  kegs,  was  manufac- 
tured by  the  plaintiffs  —  the  "Brooklyn  White 
Lead  Company."     The  court  says : 

"  With  any,  but  the  most  cautious  pur- 
"  chasers,  such  would  be  the  effect  of  the  use 
"  of  that  word  in  the  defendant's  trade  mark. 

"  The  law  of  trade  marks  protects  manufac- 
"  turers,  in  their  exclusive  right  to  sell  their 
"  goods,  as  well  to  incautious  as  to  cautious 
"  purchasers  —  and  anj  false  name,  assumed  in 
"  imitation  of  that  of  the  original  manufacturer, 
"  is  a  violation  of  his  exclusive  right,  and  its 
"  use  should  be  restrained  by  injunction." 

An  injunction  was  accordingly  ordered,  restrain- 
ing the  use,  by  the  defendant,  of  the  words  "  Com- 
pany," or  the  abbreviation  "  Co.,"  in  the  trade  mark 
used  by  him,  upon  the  kegs  containing  white  lead 
of  his  manufacture. 


TRADE  MARKS. 


151 


The  case  of  Fetridge  vs.  Wells,  4  Abb.,  144,  also 
reported  in  13  How.  Pr.  R.,  385 — and  to  which  we 
have  ah'eady  had  occasion  to  refer,  as  illustrating 
the  doctrine  upon  which  the  protection  of  the  law 
is  withheld  from  a  fraudulent  manufactui'er,  even 
against  the  deceptive  and  manifestly  wrongful 
contrivances  of  another — is  also  significant,  as  an 
authority  enforcing  the  principles  now  under  con- 
sideration. 

In  this  case,  a  preliminary  injunction  was 
granted,  by  which  the  defendants  were  restrained 
from 


"  Selling  or  offering  for  sale,  directly  or 
indirectly,  any  preparation  or  compound, 
manufactared  by  them,  or  by  either  of  them, 
or  by  any  other  person  than  the  plaintiff — 
under  the  name  of  'Balm  of  Thousand 
Flowers' — or  selling,  or  offering  for  sale  any 
preparation,  or  compound,  having  printed, 
painted,  written  or  stamped,  on  the  bottles, 
containing  the  same,  the  words  'Balm  of 
Thousand  Flowers,'  or  having  or  using,  any 
label  or  wrapper,  printing  or  device,  in  such 
manner  as  to  be  a  colorable  imitation  of  those 
used  by  the  plaintiffs." 


On  the  motion  to  dissolve  the  injunction,  the  case 
came  before  the  same  learned  judge  (afterwards 


152  THE   LAW   OF 

Chief  Justice)  Duer — of  the  Superior  Court  of 
the  city  of  New  York,  to  whose  vahiable  analysis 
and  elaborate  elucidation  of  the  elementary  prin- 
ciples in  the  law  of  trade  marks,  in  the  case  of 
"  The  Amoskeag  Mamifacturing  Company  vs.  Spear!' 
the  profession  is  so  largely  indebted. 

Upon  the  question  of  fact,  as  to  the  imitation 
by  the  defendants,  of  the  plaintiffs'  trade  mark, 
the  learned  judge,  says, 

"  Without  rejecting  tlie  evidence  of  my 
"  senses,  I  cannot  doubt  that  the  label  or  trade 
"  mark  which  the  defendants  admit  that  they 
"  use,  from  its  general  resemblance  to  that  of 
"  the  plaintiff,  and  his  firm,  is  well  calculated 
"  to  mislead  the  public,  by  inducing  the  belief 
"  that  the  articles  to  which  it  is  afl^ed,  are,  in 
"  reality,  prepared  or  manufactured  by  the 
"  plaintiffs'  firm  —  nor,  can  I  doubt,  that  the 
"  label  was  framed,  with  this  design,  since  the 
"  imitation  is  so  close,  minute  and  exact,  as  in 
"  my  opinion,  to  exclude  the  supposition  of 
"  any  other  motive. 

"  It  is  true,  that  the  name  of  E.  H.  Eice,  as 
"  the  proprietor,  is  printed  on  the  label,  but  it 
"is  so  printed,  as  not  to  attract,  but  almost 
"  certainly  to  elude,  observation.  A  variation 
"  must  be  regarded  as  immaterial  which  it 
"requires  a  close  inspection  to  detect  —  and 
"  which,  can  be  scarcely  said  to  diminish  the 
"  effect  of  the  fac  simile,  which  the  simulated 
"  label,  in  all  other  respects,  is  found  to 
"  exhibit. 


TRADE   MARKS.  153 

"  Hence,  were  this  the  only  question  in  the 
"  case,  I  should  have  no  difficulty  in  holding, 
"  that  the  injunction  which  is  sought  to  be  dis- 
"  solved,  must  be  retained  and  enforced  — 
"  but,  it  is  proper  to  add,  that  upon  no  suppo- 
"  sition,  would  I  consent  to  retain  it,  for  all  the 
"  purposes  for  which  it  has  been  granted,  and 
"  for  which  its  continuance  has  been  asked." 

The  learned  judge  then  proceeds  to  the  appli- 
cation of  the  principle  of  lavr,  established  by 
the  preceding  authorities,  to  the  claim  made 
by  the  plaintiffs,  to  an  exclusive  right  to  the  use 
of  the  words  in  their  label — "  Balm  of  Thousand 
Flowers" — and  says: 

"  The  position  so  strenuously  insisted  on  that 
"  the  plaintiffs'  firm  have  an  exclusive  property 
"  in  the  words,  '  Balm  of  Thousand  Flowers,' 
"  or,  which  is  the  same  thing,  an  exclusive 
"  right  to  use  those  words,  in  a  trade  mark, 
"  I  wholly  reject." 

"It  is  not  necessary  to  deny,  that  a  name 
"  may,  in  some  cases,  be  rightfully  used  and 
"  protected  as  a  trade  mark — but  this  is  only 
"  true,  when  the  name  is  used  merely  as  indi- 
"  eating  the  true  origin  and  ownershij)  of  the 
"  article  offered  for  sale  —  never,  where  it  is 
"  used  to  designate  the  article  itself,  and  has 
"  become,  by  adoption,  and  use,  its  proper 
"  appellation. 

"  When  a  new  preparation  or  compound  is 
.  ''  offered  for  sale,  a  distinctive  and  specific 
"  name,  must  necessarily  be  given  it." 

20 


154  THE  LAW   OF 

"  The  name  tlius  given  to  it,  no  matter 
"  wlien,  or  by  whom  imposed,  becomes  by 
.  "use,  its  proper  appellation  —  and  passes,  as 
"  such,  into  our  common  language.  Hence, 
"  all  who  have  an  equal  right  to  manufacture, 
"  and  sell  the  article,  have  an  equal  right  to 
"  designate  and  sell  it  by  its  appropriate  name, 
"  the  name  by  which,  alone,  it  is  distinguished 
"  and  known  —  provided  each  person  is  careful 
"  to  sell  the  article,  as  prepared  and  manufac- 
"  tured  by  himself,  and  not  by  another. 

"  When  this  caution  is  used,  there  is  no 
"  deception,  of  which  a  rival  manufacturer, 
"  not  even  the  manufacturer  by  whom  the 
"  distinctive  name  was  first  invented  or  adopted, 
"  can  justly  complain  —  and  so  far  from  there 
"  being  any  imposition  on  the  public,  it  is  the 
"  use  of  the  distinctive  name,  which  gives  to 
"  purchasers,  the  very  information  which  they 
"  are  entitled  to  have." 

"  In  short,  an  exclusive  right  to  use  on  a 
"  label,  or  other  trade  mark,  the  appropriate 
"  name  of  a  manufactured  article,  exists  only 
"  in  those  who  have  an  exclusive  property  in 
"the  article  itself — and  it  is  not  pretended, 
"  that  the  plaintiff,  or  his  firm,  have  any 
"  exclusive  property  in  the  preparation  or  com- 
"  pound,  to  which  the  well  sounding  name, 
"  '  Balm  of  Thousand  Flowers '  has  been 
"  given, 

"It  is  only  the  seductive  name  that  they 
"claim,  as  their  exclusive  property  —  and, 
"  doubtless,  from  their  experience  of  its  value 
"  in  the  extension  of  their  sales. 

"  This,  however,  is  a  species  of  property, 
"  that,  in  my  opinion,  is  unknown  to  the  law, 


TRADE  MAEKS.  155 

"  and  tliat  can    only  be    given    to  one,  by 
"  infringement  of  tlie  rights  of  all. 

"  My  views  on  tlic  general  question,  of  an 
"  exclusive  riglit  to  sell  an  article  by  its  dis- 
"  tinctive  name,  were  fully  expressed  in  the 
"  case  of  '  The  Amosheag  Manufacturing  Com- 
"  pany  vs.  Spear,^  "  &c. 

Thus,  upon  tills  ground,  tlie  injunction  would 
liave  been  dissolved,  so  far  as  it  prohibited  the  use 
of  the  particular  words,  claimed  as  the  exclusive 
property  of  the  plaintiffs,  had  not  the  learned  judge, 
as  we  have  already  seen — adopted  the  conclusion, 
upon  another  and  distinct  ground,  that  it  was  the 
duty  of  the  court  to  deny  to  the  plaintiff  all  relief, 
and  to  withhold  from  him  any  protection  whatever. 


In  reviewing  this  case,  in  its  application  to 
another  hranch  of  our  subject,  we  have  seen  that 
Mr.  Justice  Duer  denied  the  relief  asked  for  by 
the  plaintiffs,  upon  the  ground  that  the  trade  mark 
claimed  by  them,  was  a  tissue  of  false  and  fraudu- 
lent declarations,  designed  and  calculated  to  impose 
upon  a  credulous  public. 

Mr.  Justice  Hoffman,  by  whom  the  preliminary 


156  THE   LAW  OF 

injunction  was  granted,  expressed  dissenting  views 
upon  this  point. 

So,  also,  upon  the  question,  as  to  what  may  be 
appropriated  by  a  manufacturer  as  his  trade  mark, 
and  as  such,  used  to  the  exckision  of  others,  that 
learned  judge,  in  the  case  of  Fetridge  vs.  MercJiant, 
4  Abb.,  136 — has  stated  his  decided  dissent  from 
the  opinion  of  Mr.  Justice  Duer.  This  dissent  did 
not  affect  the  result  of  the  litigation,  for  the  reason 
that  the  same  conclusion  was  reached  by  Mr.  Jus- 
tice Hoffman,  in  this  case,  as  by  Mr.  Justice  Duer, 
in  the  preceding  one — but  upon  the  distinct 
ground,  that  the  evidence  did  not  clearly  establish 
the  plaintiff's  title,  by  priority  of  appropriation. 

In  the  case  of  Fetridge  vs.  Merchant,  the  same 
plaintiff  sought  the  same  relief  and  protection 
against  another  defendant,  for  the  same  alleged 
violation  of  his  trade  mark. 

The  learned  judge,  in  relation  to  the  principle  we 
are  now  considering — says: 

"  Another  proposition  is,  that  a  name  or 
"  appellation  may  be  appropriated  as  a  trade 
"  mark  —  That  this  may  be  given  to  a  com- 
"  pound,  or  article,  every  ingredient  or  portion 
"  of  which,  is  open  to  the  use  of  every  one, 
"  but  the  sale  of  which,  under  that  appellation 
"  is  not  lawful  to  any  other  person. 

"  It  would  scarcely  be  going  too  far  to  say, 
"  that  the  further  removed,  such  an  appellation 


TRADE   MARKS.  157 

"  is,  from  actually  representing  the  article  in 

"  question,  tlie  more  exclusive  and  decided, 
"  becomes  the  right  to  it. 

"  Medicated  Mexican  Balm,"  had  nothing  in 
"  its  composition  peculiar  to  the  land  of  Mon- 
"  tezuma  (6  Bea.,  QQ,)  and  "  Chinese  Liniment" 
"  was,  in  all  its  ingredients,  a  stranger  to  the 
"  Celestial  Empire — 4  McLean,  516." 

"  It  appears  to  me  that  the  term  'Balm  of 
"  Thousand  Flowers'  is  of  this  character. 

"  The  article  is  a  liquid  soap,  or  perfumed 
"  liquid  soap. 

"  That  name  would  be  the  name  of  the  arti- 
"  cle,  because  it  would  indicate  its  nature  — 
"  The  ingredients  are  palm  oil,  potash,  sugar 
"  or  honey,  alcohol,  and  some  strong  scents. 

"  The  connection  from  the  use  of  honey,  if 
"  employed  by  the  plaintiff's,  is  remote  and 
"  fanciful. 

"  The  term  is,  in  my  opinion,  extrinsic,  and 
"  not  indicative." 

"  I  am  compelled  then,  to  differ,  in  this  par- 
"  ticular  from  the  learned  judge  in  the  case  of 
"  Fetridge  vs.  Rice^  in  Boston.  He  treats  the 
"  phrase  as  '  the  proper  name  and  appellation 
"  of  the  article.' " 

[Sucli,  also  as  we  have  seen,  was  tlie  conclusion 
of  Mr.  Justice  Duer  in  the  case  of  Fetridge  vs. 
Wells:] 

The  learned  judge,  having  determined  to  rest  his 
decision  of  the  case  before  him,  upon  the  ground 
of  insufficient  proof  of  prior  appropriation,  by  the 
plaintiffs,  merely  states  his  conclusions  upon  the 


158  THE   LAW    OF 

questions  now  in  review,  without  undertaking  to 
urge,  or  express,  his  reasons,  for  adopting  those 
conclusions. 

This  is  to  be  regretted — for  these  conclusions 
are  not  only  at  variance  with  those  of  other 
learned  judges,  and  especially  with  those  of  the 
learned  judge,  who  had  then  just  decided  the  case 
of  Fetridge  vs.  Wells,  but  also  seem  to  be  in-econ- 
cileable  with  the  established  principles,  upon 
which  the  junsdiction  in  equity  has  been  rested 
for  the  protection  of  property  in  trade  marks. 

If  the  name  devised  and  given  to  an  article  of 
merchandise,  by  the  manufacturer,  (who  possesses 
no  exclusive  right  to  manufactm-e  or  sell  the  article 
itself,)  was  not  designed  to  declare  the  origin  or 
ownership  of  the  article,  the  manufacturer,  or  place 
of  manufactm-e — and  can,  by  no  possibility  per- 
form that  office,  and  if  the  name,  or  whatever  may 
constitiite  the  trade  mark,  that  does,  dhectly  or 
indirectly,  perform  that  office,  is  alone  entitled  to 
be  recognized  and  protected,  as  property,  for  the 
reason  that  the  imitation  of  such  trade  mark  only, 
can  accomplish  the  wrong  for  which  alone  the  law 
provides  a  remedy,  namely — the  selling  of  the 
merchandise  of  the  wrongdoer  as  and  for  that  of 
the  original  appropriator  of  the  trade  mark — then, 
it  is  not  easy  to  perceive,  why,   or  upon  what 


TRADE  MARKS.  159 

ground,  there  should,  or  can  be,  any  difference 
between  a  name  that  is  extrinsic,  and  one  that  is 
indicative. 

If  the  name  does  not  pretend  to  indicate  the 
properties  or  constituents  of  the  manufactured 
article,  but  is  a  name  of  fancy,  merely,  removed 
as  far  from  any  actual  representation  of  the  thing, 
as  the  "  Medicated  Mexican  Balm "  was  from  the 
land  of  Montezuma,  does  it,  for  that  reason, 
approach  a  shade  nearer  the  essential  condition  of  a 
trade  mark,  of  which  the  right  of  property  can  be 
predicated, — namely,  a  denotement  that  the  article, 
thus  denominated,  was  manufactured,  or  is  for  sale, 
byA.  B.? 

But  the  case  in  4  McLean,  cited  by  the  learned 
judge,  as  an  authority  apposite  to  the  doctrine  of  his 
opinion,  is  certainly  very  far  from  affording  it  the 
smallest  support. 

The  plaintiff  in  that  case  (  Cqffeen  vs.  Brunton, 
4  McLean,  516,)  made  no  claim  whatever  to  the 
exclusive  use  of  the  words  or  name  "  Chinese  Lini- 
ment"— nor  did  the  defendant  use  the  same,  or 
any  colorable  imitation  of  the  same  words — and 
if  such  a  claim  had  been  made  by  the  plaintiff,  and 
the  defendant  had  copied  or  imitated  that  name, — 
it  is  manifest  from  the  language  of  Mr.  Justice 
McLean — that  he  would  not  have  sustained  such 


160  THE   LAW  OP        . 

a  claim.  What  the  defendant  in  that  case  did,  and 
was  restrained  from  doing,  by  the  injunction  of  the 
com-t,  was  simply,  this.  He  so  prepared  the  label 
for  his  medicine,  that  he  called  "  Ohio  Liniment " — 
in  all  its  general  features — and  in  the  language 
of  the  printed  du-ections  for  its  use,  which  fonned  a 
part  of  it — "as  to  produce  an  impression  on  the 
purchaser  and  the  public,  that  the  liniment  sold  by 
the  defendant,  contained  the  same  ingredients  as 
the  'Cliinese  Liniment' — and  was,  in  effect,  the 
same  medicine." 

In  the  case  also,  of  Perry  vs.  Truffit,  to  which 
the  learned  judge  refers,  (not  more  fortunately  than 
to  that  of  Coffeen  vs.  JBruntoii)  the  exclusive  right 
claimed  by  the  plaintiff  in  the  use  of  the  words, 
"Medicated  Mexican  Balm,"  was  denied  by  the 
Master  of  the  Rolls — and  his  opinion  manifestly 
was,  as  Mr.  Justice  Duer  declares,  in  his  review  of 
that  case,  (vide  2  Sand.  S.  C.  R.,  612)  that — 

"  As  the  words  "Medicated  Mexican  Balm" 
"  might  be  just  as  true  a  description  of  the 
"  medicine  of  the  defendant,  as  that  of  the 
"  plaintiff,  the  former  had  an  equal  right  to 
"  use  them  with  the  latter." 

In  other  words — the  name,  being  one  of  fancy 
merely,  or,  at  most,  indicating  the  mere  quality  or 
character   of  the   article,   could  not  become  the 


TRADE   MARKS.  161 

exclusive  property  of  any  one,  who  had  not  an 
exclusive  right  to  manufacture  and  sell  the  article 
itself. 

This  is  certainly  the  principle  resulting  from  the 
decision  in  the  case  in  6  Beavan — wliich  the 
learned  judge  in  Fet ridge  vs.  Merchant,  intimates  as 
an  authority,  justifying  the  \^ews  which  he  there 
expresses — and,  as  we  have  before  said,  it  seems 
to  us,  that  a  departure  from  this  great,  leading 
fundamental  principle,  would  be  to  launch  upon  a 
sea  of  uncertainty,  but  whose  currents  unerringly 
tend  towards  those  shoals  and  breakers,  which 
foreshadow  the  "mischievous  consequences" — so 
earnestly  deprecated  by  Lord  Mansfield — who, 
in  Blanclmrd  vs.  Hill,  resisted  the  first  attempts  to 
obtain  a  legal  recognition  of  property  in  trade 
marks. 

The  principles  laid  down  in  the  case  of  "  The 
Amoskeag  Manufacturing  Company  vs.  Spear,"  have 
been  recognized  as  established  law  by  the  full 
bench  of  the  same  comi,  in  the  case  of  Williams 
vs.  Johnson,  2  Bos  worth,  1. 

In  that  case,  it  appeared,  that  the  plaintiff,  Wil- 
liams, was  a  manufactm'er,  at  Manchester,  in  Con- 
necticut, of  a  particular  kind  of  soap,  to  wliich  he 
gave  the  name  of  "  Genuine  Yankee  Soap."  Each 
cake  of  his  soap  was  covered  with  tin  foil,  and  on 

21 


162  THE  LAW    OF 

the  top  was  affixed  an  octagonal,  pink  colored 
label,  containing  these  words :  "  Genuine  Yankee 
Soap,  manufactured  at  Manchester,  Connecticut, 
by  Williams  &  Bro.,  Chemists  and  Apothecaries. 
To  prevent  counterfeits,  their  name  will  be  on  each 
cake." 

On  one  side  of  each  cake,  was  an  octagonal,  pink 
colored  label,  containing  these  words :  "  The  Gen- 
uine Yankee  Soap  is  warranted  superior  to  any 
foreign  compound  for  shaving  and  the  toilet — 
affording  a  copious  and  heavy  lather,  which  does 
not  dry  on  the  face,  leaving  the  skin  soft  and 
smooth."  On  the  other  side  of  each  cake,  was 
another  pink  colored  label,  containing  the  name  of 
the  manufactm'ers  or  plaintiffs'  firm,  in  imitation 
of  writing — as  a  fac  simile  of  their  signature  — 
"Williams  &  Bro." 

The  cakes  of  soap,  being  thus  carefully  prepared, 
and  labeled,  were  put  up  in  boxes,  each  containing 
one  dozen,  which  boxes  were  thus  marked :  "  One 
dozen  Genuine  Yankee  Soap,  warranted  superior 
to  any  foreign  compound  for  shaving  and  the 
toilet — manufactiu-ed  at  Manchester,  Connecticut, 
by  Williams  &  Bro.,  Chemists  and  Apothecaries. 
To  prevent  coimterfeits,  their  name  will  be  on  each 
cake." 

In  this,  was  employed  a  peculiar  and  fanciful 


TRADE    MARKS.  lb  J 

style  of  printing,  form  of  letters,  and  arrangement 
of  lines. 

Thus  2^i*ep^i*ecl,  and  labeled,  and  packed— the 
soap  was  bronght  into  the  market,  was  favorably 
received,  and  its  sale  became  very  extensive,  result- 
ing in  large  profits  to  the  manufacturer. 

The  defendant  established  a  manufactory  of  soap 
in  New.  York — prepared  the  same  in  cakes,  of  the 
same  shape  and  size  as  the  plaintiffs'  —  covered 
each  cake  with  tin  foil — and  affixed  pink  colored, 
octagonal  labels,  on  the  top  and  sides — each  label 
containing  the  precise  words  used  by  the  plaintiffs 
on  their  labels — with  the  exception  that  the  name 
(pm'porting  to  be  that  of  the  manufacturer,  but 
which  was  falsely  assumed  by  the  defendant)  was 
"  L.  Williams  &  Co.,"  and  the  place  of  manufacture, 
"  New  York." 

The  defendant's  soap  was  packed  in  boxes,  each 
containing  a  dozen  cakes,  and  each  marked  "  One 
Dozen  Genuine  Yankee  Soap,  warranted  superior 
to  any  foreign  compound,  for  shaving  and  the 
toilet — manufactured  by  L.  Williams  &  Co.,  New 
York.  To  prevent  counterfeits,  then'  signature 
will  be  on  each  cake." 

In  their  mark  or  label,  for  the  package  or  box — 
the  arrangement  of  the  lines,  the  peculiarity  of  the 
letters,  the  style  of  the  printing,  were,  in  every 


164  THE    LAW    OF 

part,  an  almost  exact  copy  of  that  of  the  plain- 
tiffs. 

The  learned  judge,  who  gave  the  opinion  of  the 
court,  in  this  case,  (  Mr.  Justice  Woodruff  )  char- 
acterizes the  conduct  of  the  defendant  as: 

"  A  gross  and  palpable  endeavor,  by  an 
"  imitation  of  the  plaintiffs'  marks  and  labels,  to 
"  deceive  the  public,  and  obtain  the  patronage, 
"  of  right  belonging  to  the  plaintiffs." 

"  The  plaintiffs  had  employed  their  skill  in 
"  the  compoundiag  of  well  known  ingredients 
"  for  the  manufacture  of  soap,  and  in  all  the 
"  benefits  resulting  from  that  skill,  were  entitled 
"   to  protection." 

"  "What  marks  or  devices,"  (say  the  court) 
"  are  employed  by  the  plaintiffs,  to  denote  that 
"  the  soajj  is  made  hy  them,  and  is  combined  by 
"  the  skill  that  was  employed  in  the  making  of 
"  soap,  heretofore  made  and  sold  by  them, 
"  bearing  the  same  mark,  are  entitled  to 
"  protection." 

"  As,  for  example.  If  the  plaintiffs  had 
"  chosen  to  stamp  their  soap  with  some  impres- 
"  sion  having  no  other  meaning  than  to  distin- 
"  guish  their  manufacture,  from  that  of  others, 
"  and  have  given  it  out  as  their  mark,  and,  by 
"  this  description,  soap  of  their  manufacture 
"  had  acquired  a  reputation  and  sale,  they 
"  would  be  entitled  to  protection." 

"  The  marks  and  labels  which  they  have 
"  adopted,  foi-  this  purpose,  the  defendant  has 
"  copied  —  and  even  the  single  variation  in  the 
"  change  of  name,  imports  a  falsehood,  and 


TRADE   MARKS.  165 

"tends    to    create,    rather  than   destroy   the 
"  impression,  that  the  soap  was  manufactured 

"  by  the  plaintiffs." 

Quoting  from  Senator  Lott,  in  the  case  of  Taylor 
vs.  Carpenter,  the  court  says  : 

"  Honest  competition  relies  only  on  the  in- 
"  trinsic  merit  of  the  article  brought  into 
"  market,  and  does  not  require  a  resort  to  false 
"  or  fraudulent  device  or  token.  That,  cer- 
"  tainly,  cannot  deserve  the  appellation,  which 
"  studiously  gives  to  the  product  of  pretended 
"  superior  skill,  the  name  and  external  resem- 
"  blance  and  imitation  of  the  article,  with 
"  which  it  professes  to  compete." 

And  again,  quoting  from  Vice-Chancellor  Sand- 
ford,  in  the  case  of  Coates  vs.  Holhrook. 

"  A  man  is  not  to  sell  the  goods  or  manu- 
"  facture  of  B.  under  the  show  or  pretence, 
"  that  they  are  the  goods  or  manufacture  of  A. 
"  who,  by  superior  skill  or  industry,  has  estab- 
"  lished  the  reputation  of  his  articles  in  the 
"  market.  The  law  will  not  permit  a  person 
"  to  practise  a  deception  of  that  kind,  or  to 
"  use  the  means  which  contribute  to  effect  it. 
"  He  has  no  right,  and  he  will  not  be  allowed, 
"  to  use  the  names,  letters,  marks  or  other 
"  symbols,  by  which  he  may  palm  off  upon 
"  buyers,  as  the  manufacturer  of  another,  the 
"  article  he  is  selling — and  thereby  attract  to 
"  himself  the  patronage,  that,  without  such 
"deceptive  use  of  such  names,   &c.,   would 


166 


THE    LAW    OF 


"  have  enured  to  the  benefit  of  that  other  per- 
"  son,  who  first  got  np,  or  was  alone  accustomed 
"  to  use,  such  names,  marks,  letters  or  symbols." 

And  again,  quoting  from  Mr.  Justice  Duee,  in 
tlie  case  of  The  Amoskeag  Manufacturing  Com- 
yamj  vs.  Spear. 


"  In  order  to  convey  a  false  impression  to 
the  mind  of  the  public,  as  to  the  true  origin 
and  ownership  of  goods,  it  is  not  necessary 
that  the  imitation  of  an  original  trade  mark, 
should  be  exact  and  perfect.  It  may  be 
limited,  and  jDartial.  It  may  embrace  varia- 
tions, that  a  comparison  with  the  original, 
would  instantly  disclose — yet,  a  resemblance 
may  exist,  that  was  designed  to  mislead  the 
public — and  the  effect  intended,  may  have 
been  produced,  nor  can  it  be  doubted,  that 
when  this  design  is  apparent,  and  this  effect 
has  followed,  an  injunction  may  rightfully  be 
issued,  and  oua:ht  to  be  issued." 


But  the  point  in  which  tins  case  especially 
recognizes  the  authority  of  that  of  The  Amoskeag 
Manufacturing  Company  vs.  Spear,  and  the  doctrine 
there  laid  down,  from  which  the  learned  judge 
dissented,  in  the  case  of  Fetridge  vs.  Merchant, 
relates  to  the  right  claimed  to  the  exclusive  use 
by  the  plaintiffs,  upon  their  labels,  of  the  words 
"  Genuine  Yankee  Soap." 

Upon  this  point  the  court  says : 


TRADE  MARKS. 


167 


"  Whether,  upon  talcing  proofs,  it  would 
appear  that  the  words  'Genuine  Yankee 
Soap '  are  to  be  deemed  descriptive  of  this 
kind  of  soap,  which  any  one  may  make  and 
sell  by  its  proper  name,  or  are  terms  properly 
designating  the  plaintiffs'  manufacture,  and 
so,  descriptive  of  their  skill  and  industry,  in 
making  an  article,  already  in  common  use, 
by  its  proper  and  generic  name  of  soap,  is 
perhaps  not  free  from  doubt. 

"It  is  quite  clear,  that  so  far  as  it  indicates 
the  place  of  manufacture,  it  is  a  fraud  on  the^ 
part  of  the  defendants  to  use  it.  Still,  the 
case  referred  to — {The  Amoskeag  Manufactur- 
ing Oomixtng  vs.  /Spear,)  decides  —  that, 
though  it  be,  in  this  particular,  a  fraud  on  the 
part  of  the  defendant,  the  plaintiffs  cannot 
have  an  injunction,  unless  it  shall  appear,  that 
it  designates  their  oivn  manitfacture,  and  that 
its  use  by  the  defendant,  operates  to  the 
prejudice  of  a  right  acquired  by  them." 


And,  accordingly,  the  injunction  granted  in  this 
case,  was  "made  to  conform"  to  that,  in  the  case 
decided  by  Mr.  Justice  Duek. 

In  that,  the  prohibition  upon  the  defendants,  did 
not  include  the  letters  "  A.  C.  A." 

In  this,  it  did  not  include  the  words  "  Genuine 
Yankee  Soap." 


168  THE    LAW   OF 


The  case  of  JJdolplw  Wolfe  vs.  Emile  Goulard, 
18  How.  Pr.  R.,  64,  recently  decided  by  Mr. 
Justice  Ingka-ham,  in  tlie  Supreme  Court  of  New 
York — in  some  of  its  features,  is  much  to  the 
point,  upon  the  branch  of  the  subject  embraced 
in  this  chapter. 

The  plaintiff  in  this  action,  claimed  to  be  the 
manufacturer  and  vendor  of  a  certain  kind  of 
gin,  which  he  denominated  "Aromatic  Scheidam 
Schnapps." 

He  charged  the  defendant,  in  his  bill,  with  an 
imitation  of  his  marks  and  labels,  hy  the  use  of  those 
words,  upon  an  article  of  gin  sold  by  him. 

In  the  case,  as  presented  by  the  pleadings,  or 
by  concessions  at  the  hearing,  it  appeared  that  the 
object  of  the  action  was,  to  restrain  the  defendant 
from  the  use  of  those  particular  words,  "  Aromatic 
Scheidam  Schnapps,"  —  and,  if  we  coiTCctly  under- 
stand it,  all  question  as  to  the  defendant's  violation 
of  the  plaintiff's  rights,  by  endeavoring  to  sell  his 
gin,  as  that  of  the  plaintiff,  through  the  instrumen- 
tality of  an  imitation  of  the  form,  size  and  color  of 
the  wrapper  and  labels,  and  of  the  words  printed 
thereon,  and  their  peculiar  arrangement,  were 
excluded  from  the  consideration  of  the  com-t,  upon 


TRADE   MARKS.  169 

the  motion  for  an  injunction — and  the  inquiiy  was 
hmited  to  the  question,  whether  the  plaintiff  had 
such  a  right  to  the  use  of  the  words  "  Scheidam 
Schnapps,"  to  designate  his  gin,  as  to  entitle  him 
to  an  injunction,  restraining  the  defendant  from 
using  them. 

After  a  review  of  the  evidence,  disclosed  by  the 
affidavits,  in  relation  to  the  proper  and  accepted 
signification  of  the  words  in  question,  which  tended 
strongly  to  the  conclusion,  as  matter  of  fact,  that 
the  word  "  Schnapps "  was  in  common  use  in 
"  Scheidam,"  to  designate  gin,  and  that  the  words 
were,  therefore,  simply  the  proper  name  of  the 
article,  the  court  proceeds  to  a  consideration  of  the 
question  of  law,  and  says : 

"  When  a  person  forms  a  new  word,  to 
"  designate  an  article  made  by  him,  which  has 
"  never  been  used  before,  he  may  obtain  such 
"  a  right  to  that  name  as  to  entitle  him  to  the 
"  sole  use  of  it,  as  against  others,  who  attempt 
"  to  use  it  for  a  similar  article.  But  such  an 
"  exclusive  right  can  never  be  successfully 
"  claimed,  of  words  in  common  use  previously, 
"  as  applicable  to  similar  articles." 

The  court  then  p'oceeds  to  a  consideration  of 
the  several  authorities  upon  the  question  of  what 
may  be  appropriated  as  a  trade  mark,  entitling  the 
owner  to  protection  in  its  exclusive  use,  and  quotes, 

22 


170  THE  LAW    of' 

as  autlioritative  expressions  of  the  established  prin- 
ciples, the  language  of  Mr.  Justice  Duer,  in  the 
several  cases  decided  by  him — as  also  that  of  the 
Supreme  Court,  in  the  cases  of  "  Stokes  vs.  Land- 
graffl'  "  Clark  vs.  Clarkl'  and  "  The  Brooklyn  White 
head  Company  vs.  Masiiryl'  already  referred  to  ■ — 
and,  in  accordance  with  these  principles,  the  injunc- 
tion prayed  for  against  the  defendant,  was  dis- 
solved. 

Whatever  may  be  the  rights  of  the  plaintiff  in 
this  action,  to  restrain  the  fraudulent  and  colorable 
imitation  of  his  labels  and  trade  mark,  by  the 
defendant,  by  which  he  is  enabled  to  pass  off  his 
gin  as  the  plaintiff's — we  are  at  a  loss  to  imder- 
stand  how  the  litigation  can  terminate  otherwise 
than  in  accordance  with  the  decision  of  Mr.  Jus- 
tice Ingraham,  if  the  sole  relief  sought  at  the  trial, 
be  that  to  which  the  claim  of  the  plaintiff  was 
limited,  on  the  motion  for  an  injunction — namely, 
to  restrain  the  defendants  from  the  use  of  the  par- 
ticular words,  "  Scheidam  Schnapps," — and  if  it  be 
conceded  that  the  words  do  not,  of  themselves,  tend 
to  indicate  the  plaintiff,  as  the  manufacturer,  or 
vendor,  of  the  article,  we  are  unable  to  perceive 
how  any  evidence  whatever,  of  priority  of  appro- 
priation, by  the  plaintiff,  can  be  held  to  vest  in 
him  an   exclusive   light   to   their  use,  without  a 


TRADE   MARKS.  Itl 

departure  from  those  established  prmciples,   upon 
which  such  exchisive  right  can  alone  be  rested. 


At  about  the  same  time  that  the  case  of  Wolfe 
vs.  Goulard  was  decided  in  the  Supreme  Court 
of  New  York,  that  of  Burnett  vs.  Phalon  was 
under  consideration  in  the  Superior  Court  of  the 
city  of  New  York. 

This  case,  in  some  of  its  featm'es,  is  of  a  novel 
character — and  by  reason  of  the  peculiarity  of 
some  of  the  views  presented  by  the  learned- judge, 
before  whom  the  hearing  was  had,  on  the  motion 
for  an  injunction  (Mr.  Justice  Pierrepont,)  it  is 
worthy  of  more  than  a  passing  notice. 

The  plaintiff  was  a  chemist,  residing  in  Boston, — 
and  in  1856,  it  appeared,  compounded  from  cocoa- 
nut  oil  and  other  ingredients,  a  mixture  for  the 
hair — and  as  a  designation  for  his  compound, 
devised  a  name  never  before  used,  and  miknown 
to  the  language  —  namely,  '' Cocoaine'''  —  and  im- 
mediately published  in  all  his  circulars,  and  in  the 
principal  newspapers  throughout  the  country,  and 
especially  in  nearly  every  newspaper  in  the  city 
of  New  York,  which  was   the   residence   of  the 


172  THE    LAW  OF 

defendant,  that  he  had  adopted  that  name  as  his 
trade  mark — to  designate  the  article  as  his  manu- 
factm-e — and  to  secm-e  the  pubHc,  and  himself, 
against  imposition,  and  that  all  unauthorized  use 
of  that  name  or  trade  mark,  would  be  promptly 
prosecuted.  It  appeared  that  he  had  expended  in  his 
advertisements,  some  ten  thousand  dollars,  before 
the  alleged  invasion  of  his  rights  by  the  defendant, 
and  it  was  not  pretended,  that  the  defendants 
were  not  fully  cognizant  of  his  advertisements  and 
notifications,  as  to  this  alleged  trade  mark. 

The  compound  met  with  a  rapid  sale — which 
was  attended  w^ith  no  inconsiderable  profit. 

Upon  each  bottle,  containing  the  plaintiff's  mix- 
ture, he  afiixed  a  label,  with  the  following  words 
piinted  thereon,  and  somewhat  thus  arranged : 

"A 

Perfect 

Hair  Dressing, 

A  Promoter 

of  the 

Growth  of  Hair, 

A  preparation 

Free  from  irritating  matter. 

Burnett's 

Cocoaine, 

For  preserving  and  beautifying 

the  Hair,  and  rendering 

it  dark  and  glossy." 

To  this,  was  added  a  description  of  the  properties 
of  the  compound,  and  its  peculiar  qualities,  together 


TRADE  MARKS.  173 

with  dii'ections  for  its  use — the  whole  terminating 
with  these  words : 

"  Prepared  only  by 

Joseph  Burnett  &  Co., 

Boston." 

And  the  certificate  of  entry  in  the  office  of  the 
Clerk  of  the  District  Court  of  the  United  States, 
for  the  District  of  Massachusetts — to  secure  a 
copyright  in  the  label,  under  the  act  of  Congress. 

After  the  compound  of  the  plaintiff's  had  been 
upon  the  market  about  two  years,  the  defendants 
commenced  a  preparation  of  a  mixtm*e  for  the  hair, 
a  principal  ingredient  of  which  was  alleged  to  be, 
cocoa-nut  oil. 

It  was  put  up  by  them  in  bottles,  "not  very 
imlike  those  of  the  plaintiffs'. " 

The  label  affixed  by  the  defendants  upon  then- 
bottles,  contained — first,  the  certificate  of  entry  in 
the  office  of  the  Clerk  of  the  District  Court  of  the 
United  States  for  the  Southern  District  of  New 
York,  to  secure  a  copyi'ight  in  their  label,  under 
the  act  of  Congress — and  then,  the  following 
words,  thus  aiTanged : 

"  Phalon  &  Son's 

Cocoine 

For  the  Hair, 

Prepared 

From  highly  purified 

Cocoa  Oil." 


174  THE    LAW    OF 

To  this  was  added  a  description  of  the  properties 
of  the  compound,  directions  for  its  use  and  appli- 
cation—  and  the  whole  terminating  with  the  words, 

"  Phalon  &  Sons, 

Perfumers, 

Nos.  197,  497,  and  517 

Broadway, 

New  York." 

Upon  these  facts,  the  plaintiffs  claimed  that  the 
defendants  had  violated  their  trade  mark,  and 
claimed  damages,  and  relief  by  injunction. 

The  defendants,  in  then  answer,  averred  that  the 
plaintiffs'  compound  was  an  imposition  —  and  that 
theirs  was  a  superior  article — and  further,  that  the 
plaintiffs  could  have  no  property  in  the  word 
"  Cocoaine "  —  and  if  they  could,  that  the  word 
"  Cocoine,"  adopted  by  them,  was  a  different  name, 
correctly  compounded  from  the  French,  and  not 
calculated  to  mislead  the  public. 

At  the  hearing,  no  evidence  was  offered,  tending 
to  show  any  imposition  on  the  part  of  the  plain- 
tiffs—  and  the  court,  in  accordance  Avith  the  well 
settled  doctrine, — where  the  proceedings  are  in 
equity^ — which  we  shall  have  occasion  to  consider 
hereafter,  refused  to  allow  any  evidence  as  to  the 
relative  qualities  of  the  two  mixtures. 

The  evidence  did  not  show  such  a  similarity 
between  the  defendants'  and  the  plaintiffs'  label  or 


TRADE    MARKS.  175 

trade  mark,  in  its  general  featwes,  as  to  induce  the 
belief  that  the  defendants'  was  contrived  to  mislead 
the  public,  and  enable  them  to  sell  their  mixture, 
as  and  for  that,  manufactured  by  the  plaintiffs. 

The  sole  imitation,  and  that  which,  it  was  con- 
tended, accomplished  this  result — and  manifested 
this  design,  was  in  the  use  by  the  defendants, 
of  the  word,  "  Cocoine."  The  question,  therefore, 
at  issue  in  the  case,  is  thus  stated  by  the  court : 

"  If  the  plaintiffs  cannot  acquire  any  property 
"  or  exclusive  use  in  this  name,  word  or  device 
"  (namely,  '  Cocoaine  ')  thus  contrived  and 
"  adopted  as  their  trade  mark,  then,  there  is  no 
"  ground  for  this  action —  and  if  the  defendants 
"  have  adopted  a  device  or  name,  so  differing 
"  from  that  adopted  by  the  plaintiffs,  as  in  no 
"  wise  to  deceive  the  public  or  do  injury  to  the 
"  plaintiffs — then  the  defendants  are  not  liable 
"  in  this  suit." 

The  court  then  proceeds  to  a  consideration 
of  some  of  the  leading  authorities,  and  cites, 
with  approbation,  the  following-  language  of  Lord 
Langdale,  in  Croft  vs.  Day,  7  Bea.,  84,  as  a  correct 
statement  of  the  principle  upon  which  a  right  of 
property  in  trade  marks  is  recognized. 

"  No  man  has  a  right  to  dress  himself  in 
"  colors,  or  adopt  and  bear  symbols,  to  which 
"  he  has  no  peculiar  or  exclusive  right — and 
"  thereby  personate  another  j^et'son,  for  the  pur- 


176  THE   LAW  OF 

"  pose  of  inducing  the  public  to  suppose, 
"  either  that  he  is  that  other  person^  or  that  he  is 
"  connected  tvith,  and  selling  the  manufacture  of 
"  that  other  person^  while  he  is  really  selling  his 
"  own." 

And  again, 

"  The  defendant's  (Day's)  contrivances,  were 
"  calculated  to  mislead  the  biilk  of  the  unwary 
"  public,  into  the  impression  that  the  iiew  con- 
''  cern  was  connected  with  the  old  manufactory ^ 
"  and  thus  to  benefit  the  defendants,  to  injure 
"  the  plaintiffs,  and  to  deceive  the  public." 

The  learned  judge,  having  thus  clearly  recog- 
nized the  leading,  fundamental  principle,  upon 
which  a  manufacturer  is  entitled  to  protection,  in 
the  exclusive  use  of  his  trade  mark,  proceeds  to 
the  application  as  follows : 

"  In  the  case  before  us,  Burnett  contrived  a 
"  name,  unhnoivn  to  any  language^  and  sold  his 
"  mixture,  under  that  appropriated  designation, 
"  for  two  years — advertising  during  the  entire 
"  time,  and  in  nearly  every  important  journal, 
"  in  the  city  of  New  York,  that  he  had  adopted 
"  that  loord  or  name  as  his  '  trade  mark.^  " 

"  Every  man  has  a  right  to  the  reward  of 
"  his  skill,  his  energy  and  his  honest  enter- 
"  prize,  and  when  he  has  appropriated  as  his 
"  trade  mark,  letters  combined  into  a  word 
"  hefore  unknown^  and  has  used  that  word,  and 
"  long  puhlislied  it  to  the  world,  as  Ids  adopted 
"  trade  marh,  he  has  acquired  rights  in  it  which 
"  the  courts  will  protect." 


TRADE  MARKS.  177 

And  still  furtlier  to  impress  this  doctrine,  by  a 
statement  of  that  which  is  conceived  to  be  not 
susceptible  of  appropriation,  the  learned  judge, 
proceeds : 

"  No  one  can  appropriate  a  word  in  general 
"  use,  as  his  trade  mark — and  restrain  others 
"  from  using  that  word.  Burnett  cannot  acquire 
"  property  in  the  words  'Gin,'  'Wine,'  'Brandy' 
"  or  '  Ale,'  or  in  any  other  word  known  to  the 
"  language^  and  in  common  use,  to  designate 
"  things,  or  the  qualities  of  things.  But  the 
"  word  appropriated  by  the  plaintiff,  is  not  of 
"  that  character,"  &c. 

The  doctrine  thus  inculcated  by  the  learned 
judge,  seems  somewhat  novel  in  its  character.  It 
cannot  be  deduced  from  any  preceding  authority, 
and  does  not,  as  it  appears  to  us,  harmonize  with 
the  principles  previously  recognized  by  the  comi, 
as  controlling  and  defining  the  conditions  upon 
which  property  in  trade  marks  can  be  acquired. 

Because  a  manufacturer  has  coined  a  word  before 
unknown  to  any  language  —  and  applied  that,  as  a 
name  for  his  production,  he  does  not  thereby 
designate  and  distinguish  that  production  as  his,  any 
better  than  if  he  had  used  words,  known  to  the 
language,  but  never  before  applied  to  such  a  pro- 
duction? A  newly  coined  word,  consisting  of  an 
original  combination  of  letters,  does  not,  because 

23 


178  THE    LAW    OF 

it  is  new,  serve  in  the  slightest  degree,  to  point  out 
the  true  origin  or  ownership  of  the  article  so  named, 
or  connect  it  with  the  person  who  contrived  the 
new  word? 

If  the  plaintiffs,  in  this  case,  had  simply  used 
the  word  "  Cocoaine "  in  their  label,  without  addi- 
tion of  their  name  or  address,  and  merely  adding 
to  it  a  description  of  the  properties  of  the 
"Cocoaine"  and  directions  for  its  use,  could  any 
one  thereby  have  received  the  slightest  intimation, 
as  to  the  origin  or  ownership  of  the  mixture — who 
was  the  manufacturer — or  by  whom  it  was  sold? 

And  yet,  if  anything  can  be  regarded  as  settled, 
in  the  law  of  trade  marks  —  it  is  this  —  that  an 
essential  condition,  an  imperative  sine  qua  non  to 
their  recognition,  as  property,  entithng  the  owner 
to  protection  in  their  exclusive  use,  is,  that  they 
shall,  in  some  mode,  clearly  and  truly,  designate 
the  origin  and  ownership  of  the  article  —  that  they 
shall  be  a  substantial  declaration  to  the  public  by 
him  who  adopts  them,  that  he  is  the  manufacturer 
— because,  in  the  first  place,  no  wrong  against  the 
individual,  can  be  committed,  by  the  invasion  of  a 
trade  mai'k,  otherwise  than  by  the  sale  of  the 
goods  of  the  wrong  doer,  as  and  for  the  goods  of 
the  owner  of  the  trade  mark — and  this  can  only 
be  done   by  a  copy  or  imitation  of  that,  which 


TRADE  MARKS.  179 

serves  to  designate  the  goods  as  the  manufacture 
of  the  owner  of  the  trade  mark  imitated — and 
because  too,  in  the  next  place — so  far  as  the  pub- 
He  is  concerned,  such  a  designation  in  a  trade 
mark,  as  shall  denote  the  time  origin  and  ownership 
of  the  manufactm-e,  affords  the  best  and  safest,  if 
not  the  only  pledge  and  guaranty  against  fraud 
and  imposition. 

It  certainly  does  not  seem  apparent,  that  this 
condition  can  be,  at  all  fulfilled,  simply  by  the 
adoption  and  use  of  a  newly  coined  word. 

Again — That  the  published  declarations  of  a 
manufacturer,  that  he  has  adopted  a  certain  word 
as  his  trade  mark,  can  lay  the  foundation,  or  even 
aid  in  laying  the  foundation  of  a  right  of  property 
in  the  word,  can  scarcely  be  reconciled  with  the 
principles,  heretofore  recognized,  upon  which  such 
property  can  be  acquired  —  or  with  the  policy  of 
the  law  in  recognizing  and  protecting  the  acquisition. 

It  is  the  actual  use  of  the  trade  mark,  affixed  to 
the  merchandise  of  the  manufactm-er,  and  this 
alone,  which  can  impart  to  it,  the  elements  of 
property.  The  mere  declaration  of  a  person,  how- 
ever long,  and  however  extensively  published,  that 
he  claims  j)roperty  in  a  word,  as  his  trade  mark, 
cannot  even  tend  to  make  it  his  property.  The 
law,    alone,    does    that — and   if   a   manufacturer 


180  THE   LAW    OF 

advertises  to  tlie  world,  that  a  certain  name  is  his 
trade  mark,  which  name  the  law  declares  to  be 
incapable  of  appropriation,  as  exclusive  property, 
and  which,  not  denoting  the  origin  or  ownership  of 
the  goods,  cannot  be  used  by  one,  to  the  exclusion 
of  another — his  advertisements  are  vain. 

The  conclusions  of  the  learned  judge,  in  this 
case,  may  well  be  sustained  upon  the  facts — 
though,  as  it  seems  to  us,  not  upon  the  principles 
invoked  to  justify  them. 

Adopting  the  language  of  Lord  Langdale,  in 
Croft  vs.  Day,  the  court  asks,  as  to  the  defendant's 
use  of  the  word  "  Cocoine :" 

"  Was  this  contrivance  calculated  to  mislead 
"  the  bulk  of  the  unwary  purchasers,  and  thus 
"  to  benefit  the  defendants  —  to  injure  the 
"  plaintiff,  and  to  deceive  the  public  ?" 

And  to  this  question,  the  court  says : 

"  I  have  no  doubt  that  an  honest  answer 
"  would  be  in  the  affirmative." 

But,  in  the  case  of  Croft  vs.  Day,  the  contri- 
vances to  mislead,  adopted  by  the  defendants,  were 
imitations  of  those  'portions  of  the  plaintiffs'  label, 
which  consisted  of  their  name  and  address — and 
therefore  were  calculated  to  produce  the  impres- 
sion, that  the  new  concern  was  connected  with  the 
old  manufactory. 


TRADE    MARKS.  181 

Sucli  can  never  be  the  case,  assuredly,  where  the 
contrivance  consists  altogether  in  an  imitation  of 
a  mere  name,  which  constitutes  the  entire  trade 
mark — audioes  not,  in  any  manner,  supply  the 
place  or  perfomi  the  office  of  the  name  or  addi'ess, 
in  indicating-  the  origin  or  ownership  of  the  manu- 
facture. 

It  seems  to  us,  that  in  this  case,  the  trade  mark 
of  the  plaintiff,  notwithstanding  his  declarations, 
and  claims,  and  advertisements,  and  notifications, 
was,  by  no  means,  simply  the  word  "  Cocoaine,"  — 
or  even  that  the  word  "Cocoaine"  constituted  a 
principal  portion  of  that  which  was,  strictly,  the 
trade  mark. 

The  compound  was  not  called  "  Cocoaine,"  but 
"  Burnett's  Cocoaine,"  and  every  label  contained, 
not  only  the  name,  but  the  address  of  the  plain- 
tiffs— and  also  the  distinct  declaration  that  they 
were  the  manufacturers  of  the  compound. 

These  constituted  the  trade  mark,  in  the  only 
strictly  legal  sense  of  that  term — because  they 
alone  designated  the  true  origin  and  ownership  of 
the  mixture. 

The  word  "  Cocoaine  "  was  devised  as  a  name 
for  the  article  itself,  not  altogether  inappropriate, 
because  somewhat  indicative  of  its  properties. 
Being  added  to  the  name  and  addi-ess  of  the  manu- 


182  THE   LAW   OF 

facturer,  it  might  be  regarded  as  an  auxiliaiy,  in 
serving  to  identify  and  distinguish. 

It  may  be,  therefore,  that  the  word  "  Cocoaine," 
having  been  devised  and  adopted  by  the  plaintiffs, 
and  by  them,  for  a  long  while,  and  extensively, 
used,  in  connection  with  then*  name,  upon  their 
bottles,  labels  and  packages,  became  so  inseparably 
associated,  with  the  plaintiffs  themselves,  that  no 
one  could  use  the  same  word  in  his  labels,  affixed 
to  bottles  containing  a  similar  compound,  (for  the 
word  "  Cocoine  "  is,  to  all  intents,  the  same,)  even 
though  his  own  name  and  address  were  substituted 
for  those  of  the  plaintiff,  without  actually  mislead- 
ing the  bulk  of  unwary  purchasers,  and  inducing 
the  belief  that  his  compound  was,  in  truth,  the 
manufacture  of  the  plaintiffs. 

In  other  words,  the  bulk  of  unwary  purchasers, 
who  had  been  in  the  habit  of  buying  "Burnett's 
Cocoaine" — seeing  what  appeared  to  be  the  same 
name  upon  a  bottle  or  package — would  take  it  for 
granted  that  it  was  the  same  article  which  they 
had  before  purchased,  namely  "  Bm^nett's  Cocoaine," 
and  would  not  be  likely  to  discover  their  error,  by 
a  close  examination  of  the  label,  which  would 
reveal  the  name  and  addi-ess  of  the  defendants — 
"Phalon&  Sons." 

In  this  sense,  and  in  no  other,  as  it  seems  to  us, 


^  TRADE   MARKS.  183 

could  the  defendants,  by  tlie  use  of  the  word, 
"Cocoaine"  without  anything  else  in  common  with, 
or  in  imitation  of,  the  plaintiff's  trade  mark,  be 
regarded  as  attempting  to  personate  the  plaintiffs, 
and  to  induce  the  bulk .  of  unwary  purchasers  to 
believe,  that  the  compound  contained  in  the  bot- 
tles, on  which  that  word  was  used,  was  the  manu- 
factm'e  of  the  plaintiffs. 

If  this  were  so,  as  matter  of  fact,  that  is,  if  the 
mere  use  of  the  word  in  the  label,  induced  the 
belief  that  the  defendants'  bottles  contained  the 
plaintiffs'  compound,  then,  the  rights  of  the  plain- 
tiffs would  be  invaded  by  the  use  of  this  word,  in 
like  manner,  —  (though  indirectly,  and  not,  per- 
haps, to  the  like  extent — )  as  if  their  name  and 
addi'ess  had  been  copied  or  imitated  and: 

"  Whenever  the  design  of  a  person  who 
"  imitates  a  trade  mark,  either  apparent  or 
"  proved,  is,  to  impose  his  own  goods  upon  the 
".public,  as  those  of  the  owner  of  the  mark, 
"  and  the  imitation  is  such,  that  the  success  of 
"  the  design  is  a  probable,  or  even  possible, 
"  consequence,  an  injunction  ought  to  be 
"  granted." 

We  have  not  been"  able  to  avoid  the  conclusion, 
that  the  doctrines  inculcated  in  the  cases  of 
Burnett  vs.  Flialon  —  and  Fetridge  vs.  Merchant — 
in  the  reported  opinions  of  the  learned  judges,  by 


184  THE  LAW   OF  » 

whom  they  were  respectively  heard,  on  motions 
to  dissolve  the  preliminary  injunctions,  involve 
a  departure  from  the  piinciples  established  by 
the  decisions  of  the  same  court,  in  The  Amos- 
Iteag  Manufacturing  Company  vs.  Spear,  and  Wil- 
liams vs.  Johnson,  and  so  repeatedly  recognized  and 
affirmed  by  other  tribunals. 

If  it  be  not  altogether  a  groundless  apprehension, 
that  a  departure  from  these  principles,  necessitates 
a  sacrifice  of  what  has  been  justly  deemed  the  tme 
policy  of  the  law — and  inevitably  leads,  by  sure, 
though  stealthy  steps,  to  those  "mischievous  con- 
sequences" which  always  result  from  the  imposition 
of  fetters  upon  the  freedom  of  trade,  and  an 
oppressive  restraint  upon  fairly  directed  enterprise 
and  honest  competition,  by  the  creation  of  exclu- 
sive privileges,  and  arbitrary  and  unjust  monopo- 
lies,— then  the  strictures  we  have  ventm'ed  uj)on 
the  doctrines  involved  in  these  decisions,  are  not 
without  justification. 

It  is  not  always  easy  to  look  beyond  what 
appears  to  be  a  palpable  invasion  of  individual 
rights,  to  the  possible  sacrifice  of  general  interests, 
which  may  be  involved  in  the  inculcation  of  that 
doctrine,  which  is  essential  to  the  particular  indi- 
vidual relief. 

In   view  of  this,   perhaps   that   would   not   be 


TRADE  MARKS.  185 

unwise  legislation,  which, — following  the  example 
of  the  legislatm-e  of  the  State  of  Massachusetts — 
should  prescribe  the  boundaries  of  the  equitable 
jurisdiction  of  the  courts,  over  the  subject  of  trade 
marks,  by  pro\ading,  that  it  shall  be  exercised  only, 
to  restrain  by  injunction  the  "fraudulent  use  of 
such  trade  marks  or  devices,  as  are  employed  for 
the  purpose  of  falsely  representing  any  article  to 
be  manufactured  by  a  person  or  firm  who  did  not 
in  fact  make  it." 

The  case  of  A?nes  vs.  King,  2  Gray,  379, 
illustrates  the  eifect  of  such  an  enactment,  in 
restraining  the  judicial  determination  of  issues, 
made  by  the  pleadings,  between  parties  in  trade 
mark  controversies — unsustained  by  extrinsic  evi- 
dence, upon  either  side. 

The  plaintiffs  were  manufacturers  of  shovels, 
and  in  order  to  denote  that  they  were  their  manu- 
factui'e,  and  to  distinguish  them  from  the  like 
article  made  by  any  other  manufactures,  they 
branded  them  with  the  name  of  their  fii-m  — 
"  0.  Ames  &  Sons."  They  became  known  in  the 
market  as  "  Ames'  shovels  "  —  and  acquired  much 
celebrity  and  extensive  sale. 

The  defendant  was  also  a  manufactm*er  of 
shovels,  and  branded  his  productions,  with  the 
name  "Ames"  —  as  the  plaintiifs'  averred,  in  \'io- 

24 


186  THE    LAW   OF 

lation  of  tlieii*  trade  mark — in  fraud  of  tliem,  and 
"  for  tlie  pui'pose  of  falsely  representing  the  article 
to  be  the  manufacture  of  the  plaintiffs." 

The  answer  of  the  defendant  denied  the  aver- 
ments of  the  bill  —  denied  the  intent  to  deceive 
and  defraud — and — admitting  that  he  had  used 
the  name  "  Ames,"  upon  200  dozen  shovels  of  his 
manufactm-e,  denied  that  the  plaintiffs  had  any 
exclusive  right  to  the  use  of  that  name,  and  also 
denied,  that  he  had  employed  that  word  "  for  the 
purpose  of  falsely  representing  the  article  to  be  the 
manufacture  of  the  plaintiffs,"  but,  on  the  contrary, 
averred,  that  he  had  received  an  order  for  200 
dozen  shovels,  from  a  person  whose  name  was 
"  Ames,"  and  that  he  was  desired  by  the  person  who 
gave  to  him  the  order,  to  brand  or  stamp  them 
by  that  name,  solely  for  the  purpose  of  denoting 
that  they  were  kept  for  sale  by  him — and  he  did 
so,  accordingly. 

The  answer  to  the  bill  was  under  oath,  a  hearing 
was  had  upon  the  bill  and  answer — and  the  court 
held  that  imder  the  limitations  of  the  statute,  they 
were  not  at  liberty  to  consider  the  circumstances, 
which  otherwise  might  have  been  regarded,  by  a 
court  of  equity,  as  tending  to  an  impeachment  of 
the  veracity  and  good  faith  of  the  defendant  —  and 
upon  this  ground  the  bill  was  dismissed. 


TRADE   MARKS.  187 


We  liave  just  been  liu'nislied  witli  a  manuscript 
copy  of  the  opinion  of  the  Superior  Court  of  the 
city  of  New  York,  in  the  case  of  William  S.  Cor- 
idn  et  al.  vs.  Williaf?i  H.  Daly  et  at.,  pronounced  by 
a  full  bench  of  that  coiu-t,  on  the  30th  of  June, 
1860. 

The  case  was  an  important  one, —  involving 
many  questions  of  interest  in  the  law  of  trade 
marks — but  of  peculiar  importance  —  as  presenting 
for  determination,  the  distinct  question,  as  to  the 
right  to  the  exclusive  use,  as  a  trade  mark, —  of  an 
abstract  name,  or  of  words  not  indicating  the  origin, 
or  ownership,  or  manufacture,  of  the  article  desig- 
nated,— by  the  manufiicturer  or  merchant,  who 
fii'st  adopted,  appropriated  or  applied  such  desig- 
nation. 

The  question  is  discussed  with  much  learning 
and  ability — and  the  opinion  of  the  court,  (given 
by  Mr.  Justice  Robertson,)  — reviews  with  great 
clearness  and  discriminating  fidelity,  the  prominent 
authorities  bearing  upon  the  question,  as  well  in 
the  English  as  the  American  reports. 

"We  are  glad  to  have  received  our  report  of  this 
decision,  while  the  sheets  of  this  work  are  yet  in 
press  —  and   in  season   for  incorporation   into  its 


188  THE    LAW   OF 

pages — for,  we  are  not  aware  of  any  case,  in 
which  the  fundamental  principles  in  the  law  of 
trade  marks,  are  more  fully  recognized — more 
clearly  elucidated — or  more  faithfully  applied. 


The  plaintiffs  were  importers  of  an  article  of 
gin — manufactured  at  Rotterdam  in  Holland. 
The  manufacturers  of  this  gin,  in  1850,  agreed  to 
sell  the  same  for  importation  and  sale  in  the  United 
States  to  a  Mr.  WilHam  S.  Campbell — and  to  brand 
the  casks,  in  which  it  should  be  shipped,  with  the 
name  "Club  House"  and  the  initials  of  Campbell's 
name,  "W.  S.  C." 

This  they  did;  and  when  the  gin  arrived  in 
the  United  States,  it  was  prepared  for  sale,  by  being 
drawn  from  the  casks — and  put  into  square  bottles 
— which  were  packed  in  green  painted  cases,  each 
containing  twelve  flasks.  Upon  one  side  of  these 
green  painted  boxes  were  painted  in  white,  the 
letters  "  "W.  S.  C,"  and  beneath  them,  the  words, 
"Club  House  Gin."  The  flasks  or  bottles  were 
blown,  with  the  same  initials,  and  the  same  name, 
in  the  side  or  the  shoulder — and  to  each  flask  was 


TRADE   MARKS.  189 

also  affixed  a  label,  with  a  black  ground  and  gold 
letters — containing  the  same  name  and  the  same 
initials — with  other  words,  indicating  the  place 
of  mannfactiu'e,  (Rotterdam)  and  the  name  and 
address  of  the  importer. 

The  plaintiffs  claimed  their  exclusive  rights,  by 
virtue  of  a  transfer  of  the  business,  expressly 
including  the  trade  mark  in  question,  executed  to 
them  in  1857,  by  W.  S.  Campbell — the  initials  of 
whose  name  corresponded  with  those  of  the  piin- 
cipal  plaintiff. 

The  defendants  were  importers  of  an  article  of 
gin  from  Holland — which  they  put  into  square 
bottles  like  those  used  by  the  plaintiffs — w^ith  the 
name  "Club  House"  and  the  full  name  of  one  of 
the  defendants,  "J.  T.  Daly" — blown  in  the  side — 
( This  peculiar  preparation  of  the  bottle,  it  seems, 
was  fu'st  adopted  by  the  defendants.)  These  flasks 
were  put  into  unpainted  cases,  similar,  in  size,  to 
those  used  by  the  plaintiff,  upon  which,  in  black 
letters,  were  printed  the  words  —  "Old  London 
Club  House  Gin" — and  the  name  of  the  other 
defendant — "Wm.  H.  Daly."  To  each  flask  was 
affixed  a  label — with  a  Avhite  ground  and  black 
letters,  containing  the  words  "  London  Club  House 
Gin" — and  the  name  and  address  of  "Wm.  H. 
Daly — in  fac  simile — as  the  "sole  importer." 


190  THE    LAW  OF 

The  flasks  of  tlie  defendants  were  sealed  with  a 
green  seal,  plain — those  of  the  plaintiffs,  were 
provided  with  a  metallic  covering  over  the  cork — 
with  the  initials  "W.  S.  C,"  impressed  in  the 
centre — and  the  words  "Club  House  Gin"  around 
the  edge. 

Neither  the  assignor  of  the  plaintiffs,  nor  the 
plaintiffs,  prior  to  the  commencement  of  this  action 
had  shipped  their  gin  to,  or  sold  it  in,  any  other 
market,  than  that  of  New  York. 

The  plaintiffs  had  shipped  their  gin  to  Califor- 
nia—  and  had  never  sold  it  in  any  other  market. 

The  bill  of  complaint  contained  the  usual  aver- 
ments of  piracy  and  colorable  imitation  by  the 
defendants,  of  the  plaintiffs'  trade  mark — and  that 
they  were  thereby  selling  their  gin  as  and  for  the 
gin  of  the  plaintiffs  —  and  inducing  merchants  and 
dealers  to  purchase  of  them — who  would  other- 
wise have  purchased  from  the  plaintiffs. 

No  evidence  was  offered,  tending  to  sustain  these 
averments — and  indeed,  it  appeared,  quite  conclu- 
sively, as  well  from  the  actual  coui'se  of  business 
of  the  defendants,  as  from  the  testimony  of  many 
witnesses  connected  with  the  trade — not  only  that 
the  gin  of  the  defendants  never  had  been  sold,  as 
and  for  that  of  the  plaintiffs — and  that  no  one  ever 
had  been  induced  to  purchase,  or  had  actually 


TRADE   MARKS.  191 

pui'chased,  the  defendants'  gin,  supposing  it  to  be 
tliat  of  the  phiintiffs  —  hut  that  —  there  was  no 
point  of  similarity  between  the  labels — flasks  and 
cases  of  the  respective  parties  —  which  could 
serve  to  mislead  or  deceive — even  an  unwary 
customer — and  induce  him  to  purchase  the  defend- 
ants' gin — under  the  impression  that  it  was  the 
plaintiffs'. 

It  appears,  therefore,  to  have  been  conceded  at 
the  trial,  that  the  claim  of  the  plaintiffs  to  protec- 
tion—  was  limited  to  the  exclusive  use  of  the 
words  "  Club  House  "  as  a  designation  for  gin.  It 
was  contended  that  the  plaintiffs'  assignor,  was  the 
first  to  adopt  and  appropriate  these  words  for  this 
purpose  —  and  that  their  use  by  the  defendants, 
though  in  a  different  combination,  and  connected 
with  words,  names  or  devices,  so  entirely  dissimilar 
as  to  preclude  the  idea  of  deception,  was,  neverthe- 
less, such  an  invasion  of  the  exclusive  right  of  the 
plaintiffs  in  the  abstract  name,  as  to  entitle  them 
to  the  relief  prayed  for. 

Thus  was  presented,  in  the  language  of  the 
court — the  question: 

"  Whether  the  manufacturer  or  vendor  of  an 
"  article,  can  acquire  a  right  to  the  exclusive 
"  employment  of  a  word  or  words,  having  an 
"  established  meaning,  to  qualify  the  name  of 


192  THE  LAW    OF 

"  sucli  article,  so  as  to  deprive  every  other  per- 
"  son  of  the  right  of  using  such  words,  to 
"  designate  any  other  article,  apparently  simi- 
"  lar  —  the  words,  of  course  —  being  such  as 
"  to  have  no  reference  to  the  origin,  ownership 
"  or  manufacture  of  such  articles." 

"  This  bald  question,"  adds  the  court — 
"  although  often  disposed  of,  perpetually  recurs, 
"  apparently  only  from  an  expectation  of  im- 
"  portuning  courts  into  extending  the  doctrine 
"  of  protecting  trade  marks  to  the  verge  of 
"  granting  a  monopoly,  and  creating  a  judicial 
"  copyright — far  more  durable  than  that  granted 
"  by  statute." 

This  preliminary  statement  of  the  question, 
sufficiently  foreshadows  the  manner  of  its  final 
disposal  by  the  court — but  we  cannot  refrain  from 
extending  our  quotations  from  the  instructive 
discussion  of  principle  and  authority  contained  in 
the  elaborate  opinion  of  the  com*t. 

"  The  protection  of  trade  marks,  as  they  are 
"called,  originated  simply  with  —  as  it  is  to 
"  be  resolved  into — the  common  law  doctrine, 
"  that  he  who  sold  his  own  ware  as  another's, 
"  was  responsible  both  to  the  party  whose 
"  custom  he  had  fraudulently  obtained,  and  to 
"  him  from  whom  he  drew  it  away — and  it 
"  was  immaterial  in  what  way  he  carried  on 
"  the  imposition,  whether  by  verbal  represen- 
"  tations,  or  simulations  of  marks,  used  to 
"  designate  the  wares,  or  other  indicia  of 
"  ownership." 


TRADE   MARKS.  19 J 

The  court  then  briefly  reviews  the  earlier  cases, 
at  law — in  Popham,  Atkins  and  Douglas,  the 
decisions  of  Mr.  Justice  Doddridge,  Lord  Hard- 
wiCKE  and  Lord  Mansfield — and  adds : 

"  The  practice,  however,  grew  up,  of  pro- 
"  tecting  trade  marks  against  piracy — in  a 
"  court  of  equity,  by  its  more  efficient  powers, — 
"  out  of  which,  a  vast  body  of  law  has  grown 
"  up,  and  a  mass  of  elaborate  decisions  ren- 
"  dered,  extending  or  limiting,  the  applica- 
"  tion  of  the  principle — and  converting  the 
"  wrong  doer  into  a  trustee  for  the  injured 
"  party,  and  it  will  be  necessary  to  pursue  its 
"  course  through  that  mass,  in  order  to  dispose 
"  of  the  claim  in  this  case." 

Preliminary  to  tliis  review  of  the  decisions  of 
the  learned  Chancellors  of  England  and  of  the 
United  States  —  the  learned  coui't  states  as  deduc- 
tions from  these  authorities,  the  following : 

"  There  are  two  principles  steadily  adhered 
"  to,  in  all  the  cases  in  equity — so  far  as  we 
"  have  been  able  to  perceive. 

"  First — That  the  intent  to  pass  off  the  goods  of 
"  the  defendant  as  those  of  the  plaintiff,  must 
"  exist — although  names  maybe  used,  equally 
"  with  other  devices,  as  instruments  of  such 
"  fraud." 

"  Second — That  the  mere  use  of  the  name  alone, 
"  not  indicating  any  ownership,  origin  or  man- 

25 


194 


THE    LAW    OF 


ufacture  of  the  article  sold,  and  therefore,  by 
itself,  not  instrumental  in  representing  to  a 
purchaser,  that  the  goods  bought  by  him,  of 
the  supposed  pirate,  were  those  of  the  com- 
plaining party ;  and  only  designating  or 
exaggerating  the  materials,  kind,  quality, 
destined  use,  or  class  of  customers,  of  the 
'  articles  sold,  was  not  to  be  protected  —  with- 
out proof  of  fraudulent  intent  by  others,  in 
such  use." 


The  com't  tlien  adds 


"  The  variety  of  cases  which  have  arisen  in 
"  respect  to  trade  marks,  grows  simply  out  of 
"  the  various  ingenious  means  used  by  dealers 
"  in  similar  articles,  to  defraud  each  other, 
"  and  actually  to  represent,  without  appearing 
"  to  do  so,  that  the  wares  sold  or  articles  dealt 
"  in  by  one,  are  actually  those  of  another  — 
"  these,  of  course,  are,  almost,  as  various,  as 
"  the  instruments  used  by  dealers  as  badges  of 
"  their  ownership  or  manufacture  of  articles 
"  sold." 

"  It  is  a  curious  feet,  that  an  article,  by  a 
"  species  of  loss  of  individuality,  gains  more 
"  notoriety,  if  described  by  a  name,  having  no 
"  reference  to  its  ownership,  than  by  one, 
"  which  does — particularly  if  its  merits  are 
"not  of  the  highest  order  ^although,  at  the 
"  same  time,  it  more  readily  loses  its  celebrity, 
"  by  the  competition  of  new  rivals  for  public 
"favor,  —  manufactured  articles,  designated 
"  only  by  the  name  of  the  manufacturer,  rise 
"  more   slowly  into   notice,   but  as  they  can 


TRADE   MARKS.  195 

"  rise  only  by  tlicir  merits,  tlicy  lust  much 
"  longer  in  the  public  esteem." 

"  If  courts  were  to  consult  the  public  good 
"  only,  they  should  lend  their  aid  less  cheer- 
"  fully,  to  the  protection  of  fancy  names,  than 
"  to  those  pointing  out  ownership — but  they 
"  have  j)laced  their  judgments  entirely  on  the 
"  ground  of  relief  for  a  private  wrong." 

"  In  England — Lord  L.ixgdale,  the  able 
"  master  of  the  rolls,  has  repeatedly,  in  a  series 

of  cases,  laid  down  the  true  principles  in 
"  various  forms,  so  that  it  would  seem  strange, 
"  that  he  should  have  deemed  it  necessary  to 
"  repeat  it  so  often,  were  it  not  for  the  pertina- 
"  city  of  suitors,  to  carry  the  doctrine  beyond 
"  its  legitimate  bounds — and  acquire  a  judicial 
"  copyright  in  a  name." 

The  learned  court  then  proceeds  to  a  careful  and 
thorousrli  review  of  the  leadinof  EnMisli  and 
American  cases,  citing  the  language  of  the  judges 
as  establishing  the  principles  laid  down — and 
showing,  very  clearly,  that  even  those  cases,  relied 
upon  as  countenancing  a  different  doctrine,  will  be 
found  upon  examination  "  to  contain  other  ingre- 
dients"— and,  so  far  from  repudiating  the  general 
principle,  serve  only  to  illustrate  its  correctness. 

After  this  review  and  discussion  of  authority  the 
com't  proceeds : 

"  It  has  long  since  been  settled,  that  the 
"  common  law  gave  no  copyright  in  anything. 
"  The  princijole  that  the  mere  use  of  a  name  to 


196  THE    LAW  OF 

"  designate  an  article,  wonlcl  give  to  those  so 
"  employing  it,  the  exclusive  right  to  designate 
"  such  article  by  such  name,  would  be  giving 
"  a  copyright  of  the  most  odious  kind,  without 
"  reference  to  the  utility  of  the  application  or 
"  the  length  of  the  title — it  would  be  perpetual, 
" — the  words  used,  would  be  taken  from  the 
"  mass  of  the  language,  and  dedicated  to  the 
"  gratification  of  a  barbarous  taste,  a  capricious 
"  whim,  or  an  attempt  to  impose  upon  the 
"  public,  high  sounding  words  and  rhodomon- 
"  tade- — for  real  merit  and  lasting  reputation — 
"  and  if  the  invention  of  those  who  appropri- 
"  ated  these  names,  was  only  equal  to  their 
"  love  of  imposition,  the  whole  language  might 
"  be  laid  under  embargo,  and  no  tradesman. 
"  would  hardly  dare  to  call  his  wares  by 
"  any  descriptive  language,  lest  he  might  inno- 
"  cently  invade  some  person's  appropriation 
"  and  expose  himself  to  an  action  for  an 
"  account,  for  all  the  profits  of  his  business. 

"  Courts  ought  not  to  be  forward  so  to  cramp 
"  the  energetic  competition  of  commerce,  and 
"  give  to  a  dull  invention  of  an  epithet,  the 
"  rewards  of  successful  enterprise." 

Applying  tlie  established  principle  to  the  case 
before  the  court,  the  conclusion  is  stated,  that  the 

"  Use  of  the  words  'Club  House'  to  desig- 
"  nate  gin,  cannot  be  confined  to  the  plaintiffs, 
"  unless  they  indicate  its  origin,  of  which  there 
"  is  no  evidence." 


TRADE    MARKS.  197 

The  court  adds: 

"  But  this  term  '  Chib  House,'  not  only  does 
"  not  mdicate  origin,  including  in  that  word, 
"  ownership  and  place  of  manufacture — or  any 
"  other  means  of  designating  that  the  commodity 
"  was  that  sold  by  the  plaintiffs, —  but  it  does 
"  indicate  some  other  attribute  or  quality,  such 
"  as  nature,  kind,  grade,  destined  use,  or  class 
"  of  customers,  which  has  nothing  to  do  with 
"  origin,  and  the  cases  already  cited,  confine  the 
"  exclusive  use  of  known  words  in  a  language, 
"  to  those  which  indicate  the  origin  or  owncr- 
"  ship  of  the  article, —  otherwise  —  selling  by 
"  the  same  title,  would  not  tend  to  represent 
"  them  to  be  the  same  goods." 

"  The  idea  seems  to  have  originated  with 
"  the  existence  of  a  Club  House  at  the  place 
"  where  the  article  was  made,  in  which  the 
"  best  articles  of  the  kind,  were  really,  or,  at 
„  least,  were  believed  to  be,  consumed  —  and 
"  it  was  done,  undoubtedly,  to  indicate  the 
•'  quality  of  the  article.  Without  recurring  to 
"  conjecture,  the  evidence  establishes  the  con- 
"  stant  application  of  this  epithet  to  indicate 
"  articles  of  a  superior  quality,  and  even  gin 
"  itself,  for  nearly  a  quarter  of  a  century  — 
"  a  very  natural  result  from  the  supposed 
"  high  standard  of  articles  consumed  in  Club 
"Houses. 

"  Such  an  epithet  does  no  more  than  '  Hotel' 
"  '  Eoyal,'  '  Imperial '  or  '  Princes,'  or  any 
"  other  high  sounding  title  would  do  —  and  no 
"  one  would  be  bound  to  suspect  that  there 
"  lurked  beneath  those  words,  the  indication  of 
"  a  particular  ownership  or  manufacture." 


198  THE   LAW  OF 

"  It  seems  to  be  assumed  that  the  rale  is, 
"  that  every  existing  word  can  be  appropriated 
"  as  a  trade  mark,  and  that  the  exceptions  are 
"those,  expressing  mere  quahtj  or  kind  — 
"  whereas,  the  true  rule  is  —  that  no  words  can 
"  be  used  by  themselves,  without  other  devices 
"  as  a  trade  mark  —  except  such  as  point  out 
"  ownershij)  or  origin  —  and  those  which  have 
"  no  reference,  in  any  possible  way,  to  any  other 
"  attribute  of  the  article." 

"  The  words  in  question,  come  directly  within 
"  the  deiinition  of  Chief  Justice  Duer,  in  the 
"  '  Amoskeag  Manufacturing  Company  vs.  Spear ^^ 
"  before  cited  —  they  are  a  symbol,  which,  from 
"  the  nature  of  the  fact  they  are  used  to  signify, 
"  'others  might  employ  with  equal  truth — and 
"  therefore  have  an  equal  right  to  employ, 
"for  the  same  purpose'  —  and  no  better  test 
"  could  be  applied. 

"  If  a  person  abandons  the  simple  mode  of 
"  indicating  ownership,  by  the  use  of  his  own 
"  name,  he  ought,  at  least,  to  be  required,  not 
"  to  appropriate  as  a  trade  mark,  words  not 
"  indicating  ownership  —  but  some  other  attri- 
"  bute  of  the  article  manufactured  —  and  there- 
"  by  forever  exclude  others  from  using  the 
"  same  name,  to  mean  the  same  thjng  —  and 
"  thus  subject  innocent  persons,  to  the  risk  of 
"  being  made  liable  for  infringing  on  a  right 
"  entirely  unknown  to  them. 

"  Impositions  upon  the  public  in  regard  to 
"  such  trade  marks,  deprive  the  inventors  of 
"  any  protection.  Why  should  not  traps  laid 
"  for  innocent  dealers,  be  equally  under  the 
"  ban  of  courts." 


TRADE  MARKS.  199 

Upon  tlie  subject  of  the  supposed  acquisition  of 
property  in  trade  marks  by  mere  priority  of 
appropriation — having  premised  that  it  is  not  easy 
to  understand  how  priority  of  invention  or  use  can 
confer  such  right — the  learned  com't  adds  the 
following  instructive  considerations : 

"  The  right  does  not  become  established, 
"  until  the  trade  mark  be  so  often  used,  and  so 
"  long  employed,  exclusively  and  uninter- 
"  ruptedly,  as  to  create  the  presumption  that 
"  everybody  would  know  and  acknowledge, 
"  that  it  was  the  distinctive  badge  of  the  plain- 
"  tiff's  ownership,  and  that  the  use  of  it  by  any 
"  one,  must  have  been  intended  to  deceive  pur- 
"  chasers.  If  other  persons  had  used  it  previ- 
"  ously  —  but  its  use  had  been  discontinued  so 
"  long  as  to  give  room  for  the  inference,  that  it 
"  had  been  abandoned,  as  an  ordinary  designa- 
"  tion  of  any  similar  articles  —  and  it  was  then 
"  taken  up  by  a  person  dealing  in  the  article  — 
"  and  used  exclusively  and  uninterruptedly, 
"  so  long  as  to  give  rise  to  the  presumption 
"  that  it  was  universally  recognized  as  the 
"  indicia  of  his  ownership,  his  right  should  be 
"  protected  as  much  as  though  it  had  then  been 
"  used  for  the  first  time.  But  the  evidence  in 
"  this  case,  does  not  come  up  even  to  these 
"  requisitions." 

After  a  review  of  the  evidence  in  the  case,  both 
as  to  the  originality  of  appropriation,  and  exclu- 
siveness  of  use,  of  the  words  claimed  by  the  plain- 


200  THE   LAW  OF 

tiffs  as  their  trade  mark,  and  determining  tliat  it 
falls  far  short  of  that  which  is  required,  upon  either 
point,  and  in  any  view  of  those  questions — the 
court  then  proceeds : 

"  Laying  out  of  view,  however,  all  question 
"  as  to  the  invention  or  application  of  the  term 
"  in  question,  as  a  trade  mark  by  the  plain- 
"  tiffs  —  or  to  its  character  as  being  incapable 
"  of  appropriation  as  such  —  the  question  still 
"  remains  —  have  the  defendants  so  emj)loyed 
"  the  term  as  a  designation  for  the  gin  sold  by 
"  them,  as  to  estabhsh  an  intention  to  deprive 
"  the  plaintiffs  of  their  customers  for  the  article 
"  in  question?" 

After  a  review  of  the  evidence  upon  this  point, 
the  court  says : 

"  I  do  not  see  how  the  defendants  could  have 
"  taken  more  precautions  to  guard  against  any 
"  inference  that  they  were  selling  the  plain- 
"  tiffs'  commodity.  They  omit  the  plaintiffs' 
"  initials,  and  add  their  own  names.  That  cer- 
"  tainly  looks  like  claiming  it  as  their  own  — 
"  not  the  plaintiffs'.  They  also  prefix  the 
"  words,  'Old  London,'  which  proves  that  they 
"  did  not  intend  it  should  be  mistaken  for 
"  Eotterdam  Gin  —  and  they  pack  the  flasks 
"  in  unpainted  boxes  —  while  the  plaintiffs  put 
"  theirs  in  painted  ones." 

But  the   conclusive  character  of  the  evidence 
upon  this  point,  resulting  from  the  course  of  busi- 


TRADE    MARKS.  201 

ness  of  tlie  defendants,  in  connection  with  that  of 
the  plaintiffs — is  thus  aUuded  to  by  the  com*t — 
with  reference  to  the  principle  established  in 
the  case  of  Hoivard  vs.  Henriquez,  in  which  the 
defendant  was  enjoined  from  calling  his  hotel  by 
the  same  name,  as  that  established  by  the  plaintiff, 
in  the  same  town. 

"  There  is  also  anotlier  distinction  between 
"  this  case  and  that  of  Hoioard  vs.  Henriquez, 
"  which  is  therein  recognized. 

"  The  defendants'  goods  are  intended  for,  are 
"  shipped  to,  and  circulate  only  in,  the  Califor- 
"  nia  Market,  as  appears  by  the  ninth  and 
"  tenth  findings  of  fact — where  the  plaintiffs 
"  carry  on  no  trade — and  though  the  invention 
"  and  application  of  the  term  '  Club  House '  in 
"  Eotterdam,  to  a  gin  manufactured  there,  may 
"cross  the  Atlantic,  with  it  —  and  be  estab- 
"  lished  entirely  in  the  exclusive  possession  of 
"  the  plaintiffs,  in  the  New  York  market — it 
"  cannot  cross  the  Isthmus,  double  the  Cape,  or 
"  traverse  the  desert  to  reach  a  country  where 
"  the  plaintiifs'  products  are  not  known  —  and 
"where  the  inhabitants  —  if  they  have  such 
"  institutions  as  Clubs,  may  innocently  believe, 
"  that  an  article  sold  by  that  designation,  is 
"  thereby  meant  to  be  designated  as  of  a  higher 
"  quality — and  not  that  sold  by  the  plaintiffs." 

The  decree  of  the  court,  in  this  case,  in  con- 
formity with  the  principles,  which  it  declares  to  be 
as  well  based  upon  sound  reason,  as  sustained  by 

26 


202  THE    LAW  OF 

the  entire  current  authority,  is,  that  the  complaint 
of  the  plaintiffs  be  dismissed — with  costs. 


CHAPTER  V. 

Op  the  violation  of  Trade  Marks  and  of  the  remedy 

FOR   SUCH   violation. 

The  discussion  of  the  subjects  of  the  preceding 
chapters,  has,  of  necessity,  to  a  great  extent, 
involved,  or  required,  the  consideration  of  the 
question,  as  to  what  constitutes  in  law  a  violation 
of  a  trade  mark,  as  well  as  the  appropriate  remedy 
for  such  violation. 

The  learned  Vice-Chancellor,  in  the  case  of 
The  Collins  Company  vs.  Coiven,  3  Kay  &  Johns., 
428,  declares  that  a  violation  of  an  alleged  trade 
mark  constitutes  the  true  and  only  test  by  which 
the  right  of  property  in  it  can  be  determined. 

In  the  application,  therefore,  of  this  test,  for  the 
purpose  of  the  inquiry  into  the  constituent  requi- 
sites of  a  legitimate  trade  mark — and  its  precise 


TRADE   MARKS.  203 

nature  and  cliaracter,  as  propert}^,  entitling  .the  • 
owner  to  protection,  in  its  exclusive  use,  that  which 
constitutes  a  violation  of  such  right,  to  be  restrained 
by  injunction  or  to  be  atoned  for,  in  damages,  has 
been  so  far  considered  already — that  much  that 
may  be  said  under  this  division,  will  appear  to  be 
little  else  than  a  recapitulation. 

There  are,  however,  some  questions,  dh'ectly 
connected  with  that  of  the  wrong  and  the  remedy, 
to  which  no  allusion  has  heretofore  been  made. 

In  general  terms,  a  violation  of  a  trade  mark, 
consists  in  the  false  representation,  that  the  mer- 
chandise manufactured  or  sold  by  the  wrong 
doer,  is  the  merchandise  manufactured  or  sold 
by  another  person — effected,  by  the  copying  imi- 
tation, or  colorable  imitation,  by  the  wrong  doer, 
upon  his  goods,  of  the  trade  mark  used  to  desig- 
nate and  distinguish  the  goods  of  the  other,  as 
his  goods — so  that  dealers,  or  consumers,  are,  or 
may  be,  deceived  by  the  representation,  and 
induced  to  purchase  the  goods  of  the  wrong  doer, 
supposing  them  to  be  those  of  the  owner  of  the 
trade  mark. 

Thus,  it  will  be  perceived,  there  are  tlu-ee  con- 
ditions which  must  exist  in  combination,  to  consti- 
tute a  violation  of  the  right  of  property  in  a  trade 
mark,  entitling  its  owner  to  equitable  relief,  in  the 


204  THE  LAW   OF 

fonn  of  preventive  justice,  to  make  more  effectual 
his  legal  right — or  to  remuneration  in  damages 
for  its  invasion. 

First — There  must  be  a  false  representation; 

Second — There  must  be  a  false  representation 
effected  in  a  certain  manner ;  and 

Third — This  false  representation,  thus  effected, 
must  be  designed  or  calculated  to  produce  a 
certain  result. 

First — To  constitute  such  a  wrongful  invasion 
of  the  rights  of  another,  it  is  not  essential  that 
the  false  representation  should  be  fraudulent,  and 
made  with  the  intent  to  defraud  and  deceive. 

Such  an  intent  will  be  presumed  to  have  existed 
upon  proof  of  the  facts. 

In  the  vast  majority  of  cases,  the  facts  furnish 
such  abundant  evidence  of  a  fraudulent  intent,  as 
to  be  wholly  irreconcilable  with  innocence. 

The  case  of  Millington  vs.  Fox,  3  Myl.  &  Cr., 
338,  affords  an  instance,  however,  where  the 
absence  of  a  fraudulent  intention  was  abundantly 
proved — although,  in  that  case,  the  wrong  com- 
plained of,  consisted  in  the  use  by  the  defendant, 
of  the  name  of  the  original  manufacturer,  the 
plaintiff  himself,  which  he  had  stamped  upon  his 
steel. 


TRADE   MARKS.  205 

It  was,  in  this  case,  held  by  the  Chancellor 
(Lord  Cottenham)  that  to  airthorize  an  injunction, 
the  deception  need  not  be  intentional. 

"  That  a  man,  tliougli  not  intending  an 
"  injury  to  another,  shall  not  be  allowed  to 
"  adopt  the  marks  by  which  the  goods  of 
'•  another  are  designated,  if  the  effect  of  adopt- 
"  ing  them,  would  be  to  prejudice  the  trade  of 
"  such  other  person." 

In  the  subsequent  case  of  Perry  vs.  Trvfit,  6 
Bea.,  Q)Q —  Lord  Langdale  sa5^s,  that  he  is  "not 
aware  that  any  previous  case  had  carried  the  prin- 
ciple to  that  extent." 

This  must  be  for  the  reason,  that  no  previous 
case  had  presented  such  a  state  of  facts,  as  to 
invoke  the  application  of  the  principle — sui-ely 
not — as  the  language  of  the  learned  Master  of  the 
Rolls  would  seem  to  imply,  because  the  principle 
itself,  is  at  all  strained  or  doubtful. 

It  is  not  easy  to  perceive  upon  what  ground  its 
justice  can  be  questioned — and  we  are  not  aware 
that  it  has  been  questioned,  in  any  subsequent 
decision. 

The  essence  of  the  wrong,  is,  the  selling  of  the 
merchandise  of  liim  who  commits  it,  as  and  for  that 
of  him  against  whom  the  wrong  is  committed. 

If  A.  manufactures  a  certain   quality  of  steel. 


206  THE   LAW   OF 

upon  wliicli  he  stamps  his  name — and  B.  not 
knowing  that  the  name  thus  stamped  upon  the 
steel,  is  the  name  of  the  manufactm-er,  but  behov- 
ing it  to  be  a  name  simply  descriptive  of  the 
particular  kind  or  quality  of  the  steel,  stamps  the 
same  name  upon  the  steel  of  like  kind  and  quality, 
of  his  manufacture,  which  he  sells  in  the  market — 
it  is  ob\TLOus  that  he  sells  his  manufacture,  as  and 
for  that  of  A.,  just  as  effectually,  as  if  he  had  known 
that  he  was  violating  a  legitimate  trade  mark. 

In  the  case  of  Crawshay  vs.  Tliompson,  4  Man. 
&  Gr.,  357  —  this  doctrine  was  distinctly  affirmed. 

There,  it  was  held  by  Mr.  Justice  Maule,  that 
the  declaration  of  the  plaintiff  would  have  been 
good,  without  the  express  allegation  of  the  scienter, 
which  it  contained. 

In  the  American  cases  of  Coates  vs.  Holhrook, 
2  Sand.  Ch.  R.,  586 — Taylor  vs.  Carpenter,  Id., 
603  —  The  Amoskeag  Mamifacturing  iJompany  vs. 
Spear,  2  Sand.  S.  C.  R.,  608  —  and  in  Coffeen  vs. 
Brunton,  4  McLean,  516 — the  principle  laid  down 
by  Lord  CoxTENHAii,  in  Millington  vs.  Fox,  is  cited 
with  approval. 

In  the  case  of  Coffeen  vs.  Brunton,  Mr.  Justice 
McLean  says,  alluding  to  the  case  of  Millington 
vs.  Fox : 


TRADE  MARKS. 


207 


"  From  the  above,  it  would  seem  that  an 
intentional  fraud  is  not  necessary  to  entitle 
the  plaintiff  to  protection  —  but  that,  where 
the  same  mark  or  label  is  used,  which  recom- 
mends the  article  to  the  public  by  the  estab- 
lished reputation  of  another,  who  sells  a 
similar  article,  and  the  spurious  article  cannot 
be  distinguished  from  the  genuine  one,  an 
injunction  will  be  granted,  altliough  there 
was  no  intentional  fraud.  And  I  am  inclined 
to  think  that  this  is  a  correct  view  of  the 
principle  —  for  the  injury  will  be  neither  the 
greater  nor  less  by  the  knowledge  of  the 
party. 

"If  he  has  adopted  the  same  mark,  which 
will  cause  his  article  to  be  taken  for  another? 
in  the  market  where  it  is  known  and  approved, 
it  is  an  injury  which  the  law  will  redress." 


The  good  faith,  or  fraudulent  intent,  of  one 
who  copies  or  imitates  the  trade  mark  of  another, 
becomes  material,  with  reference  to  the  question 
of  costs — and  also,  it  may  be,  in  the  determination 
of  the  question  of  the  amount  of  damages,  in  an 
action  at  law,  where  they  are  not  susceptible  of 
actual  measurement,  but  must  be  left  to  the  deci- 
sion of  a  jury. 

In  the  case  of  Millington  vs.  Fox,  although  the 
defendant  was  restrained,  by  the  perpetual  injunc- 
tion of  the  court,  he  was  relieved  from  the  costs  of 
the  suit,  expressly  upon  the  ground  that  the  facts 
acquitted  him  of  the  charge  of  fraudulent  design. 


208  THE   LAW   OF 

In  tlie  case  of  Crawshay  vs.  Thompson,  whicli 
was  an  action  on  tlie  case,  in  which  the  defendant 
had  a  verdict — it  was  held  that  it  was  properly- 
left  to  the  jurj^,  under  the  pleadings,  and  upon  the 
question  of  damage,  to  say : 

"  Whether  the  defendant  used  the  mark, 
"  with  the  fraudulent  intention  of  supplanting 
"  the  plaintiff — or  whether  it  was  done  in  the 
. "  ordinary  course  of  his  business,  and  without 
"  any  such  intent," 

Second — The  false  representation  must  be  made 
by  copying  or  imitating  those  names,  letters,  marks, 
symbols  or  devices,  which  are  used  by  another, 
upon  goods  manufactured  or  sold  by  him,  and 
which  he  had  a  right  to  appropriate,  to  designate 
them  as  his — and  to  distinguish  them  from  goods 
manufactm^ed  or  sold  by  others. 

We  have  already  fully  considered  the  paramount 
importance  of  requiring  the  strictest  proof  of  this, 
as  the  essential  element  of  a  wrongful  invasion  of 
property  in  a  trade  mark. 

We  have  seen  that  a  violation  of  the  property 
of  another,  in  a  trade  mark,  cannot  be  predicated 
of  the  copying  or  imitation  merely  of  such  names, 
marks,  letters,  symbols  or  devices,  as  do  not  desig- 
nate the  origin  or  ownership  of  the  goods — but 


TRADE  MARKS.  209 

are  simply  descriptive  of  the  thing"  itself — or 
indicative  of  its  kind,  character  or  quality. 

No  person  can,  in  any  manner,  acquire  an 
exclusive  right  to  the  use  of  such  names,  signs, 
marks,  letters,  symbols  or  devices,  who  has  not,  at 
the  same  time,  the  exclusive  right  to  manufactm'e 
or  sell  the  article  to  which  they  are  applied. 

As  simply  denoting  the  article  or  its  character, 
or  relative  or  positive  quality,  such  names,  marks 
or  devices,  may,  with  equal  truth  and  justice,  be 
applied  to  the  goods  of  one  manufacturer  as 
those  of  another — and  therefore,  no  priority  of 
appropriation — no  originality  of  conception — 
no  public  declaration  or  long  continued  use,  can 
avail  as  the  foundation  of  an  exclusive  right  of 
property. 

But,  as  we  have  seen,  such  names,  signs,  marks, 
letters,  devices  or  symbols — may  be  effectively 
used,  as  an  auxiliary  to  the  name  and  address  of 
the  manufacturer,  or  to  such  names,  letters,  marks 
or  signs  as  (h  indicate  the  true  origin  or  ownership 
of  the  goods,  in  effecting  such  designation,  and,  in 
such  case,  the  use,  or  colorable  imitation  even,  of 
such  names,  words  or  marks,  only,  as  cannot  be 
appropriated  as  property,  may  be  as  much  a  viola- 
tion of  right,  as  if  the  name  and  address  of  the 
manufactm-er  had  been  used  or  imitated,  because 

27 


210  TTTE    LAW    OF 

made  witli  tlie  same  intent,  and  calculated  to  pro- 
duce the  like  result. 

By  way  of  illustration  of  what  is  conceived 
to  be  the  established  principle,  justly  deducible 
from  all  the  authorities  —  and  resting  upon  the 
true  policy  and  piu'pose  of  the  law  —  and  in 
order  to  a  still  further  exposition  of  our  views  of 
the  pre-eminent  importance  of  this  principle — 
as  one  necessarily  involved  in  almost  every  trade 
mark  controversy  that  can  arise — we  will  state  a 
case : 

A.  B.  is  the  manufacturer  or  vendor  of  a  certain 
kind  of  gin.  It  is  distilled  at  Scheidam.  He  calls 
it  "Club  House"  gin — and  this  name  was  never 
before  used,  as  a  designation  for  gin,  or  any  other 
article  of  merchandise. 

He  puts  it  into  bottles  of  a  certain  size  and 
form  —  each  bottle  is  provided  with  a  stiff  yellow 
paper  covering — on  the  side  is  a  label,  with  a 
pink  ground,  containing  the  words,  "A.  B's  Club 
House  Gin,"  in  vermillion  letters,  fancifully 
arranged — and  on  the  same  label,  in  blue  letters, 
several  lines,  peculiarly  arranged,  containing  a 
description  of  the  nutritious  and  health-restoring 
qualities  of  the  contents  of  the  bottles — ending 
with  the  statement  that  it  is  manufactured  at 
Scheidam. 


TRADE    MARKS.  211 

The  gin  of  A.  B.,  thus  put  up,  marked  and 
labeled,  is  sold  in  the  market  as  "A.  B's  Club 
House  Gin."  By  that  name  it  becomes  known 
to  dealers  and  the  public.  So  that — whenever 
'  Club  House  Gin "  is  alluded  to,  or  called  for, ' 
the  name  of  A.  B.  is  connected  with  it,  by  asso- 
ciation. 

By  long  use,  the  name,  "  Club  House,"  in  itself 
possessing  no  such  property,  has  become  suggestive 
of  the  origin  or  ownership  of  the  article. 

C.  D.  is  also  a  manufacturer,  or  vendor,  of  gin. 
It  is  distilled  at  Rotterdam.  Regarding  his  gin  as 
an  article  of  such  quality,  as  fits  it  to  be  used  at 
Club  Houses,  where  none  but  the  choicest  pro- 
ductions are  supposed  to  be  consumed,  he  calls 
it — "Club  House  Gin."  He  puts  it  into  bottles 
of  the  size  and  form,  known  as  the  gin  bottle* 
This  bottle  is  provided  with  no  covering  or 
wrapper — but  on  one  side  is  fixed  a  label,  with  a 
black  ground,  containing  in  gilt  letters,  plainly, 
but  not  fancifully  printed,  the  words,  "  C.  D's  Club 
House  Gin,  Rotterdam,"  without  addition — thus, 
taking  every  precaution  that  the  gin  that  he  manu- 
factures or  sells  —  shall  be  sold  as  his,  and  not  as 
and  for  that  of  A.  B. —  so  that  there  can  be  no 
deception,  even  of  the  most  unwary. 

Now,    according  to   settled   principles,  and  the 


212  THE    LAW  OF 

uniform  current  of  authority — this  is  no  violation 
of  the  trade  mark  of  A.  B. 

It  is  a  mere  use  b}^  C.  D.  of  the  words  "  Club 
House,"  upon  his  gin,  which  word,  he  had  just  as 
much  right  to  use  as  A.  B.  had — notwithstanding 
that  A.  B.  devised  and  first  used  the  word — and 
proclaimed  that  it  was  his  trade  mark — and  for  a 
long  time  has  employed  it  as  such — iJi'ovided,  that 
in  its  use,  C.  D.  is  careful  that  there  be  no  such 
similitude,  otherwise,  between  his  trade  mark  or 
label  and  that  of  A.  B.  as  can  mislead  any  one,  or 
enable  him  to  sell  his  gin,  to  the  most  unwaiy 
customer,  as  and  for  that  of  C.  D. 

To  apply  the  language  of  the  learned  judge,  in 
one  of  the  leading  cases. 

"  If  the  mere  use  of  the  words  ['  Club 
"  House,']  by  reason  of  their  long  association 
"  with  A.  B.,  should  have  the  efiect  of  mislead- 
"  ing  the  public,  as  to  the  true  origin  of  the 
"  gin,  it  would  be  unreasonable  to  suppose, 
"  that  he  is  therefore  precluded  from  using 
"  them,  as  an  expressing  of  the  facts  which 
"  they  really  signify,  and  which  may  be  just 
"  as  true,  in  relation  to  his  gin,  as  to  that  of 
"  A.  B.  or  another.  Purchasers  may  be 
"  deceived.  They  may  buy  the  gin  of  C.  D. 
"  as  that  of  A.  B. — but  they  are  not  deceived 
"  by  a  false  representation.  They  are  deceived, 
"  because  certain  words  suggest  a  meaning  to 


TRADE   MARKS.  213 

"  their  iiiiiKls,  wlilch  they  do  not,  in  reality, 
"  bear,  and  were  not  designed  to  convey." 

Again,  a  third  manufacturer  of  gin  is  E.  F.  His 
gin  is  distilled  at  Amsterdam.  He  puts  it  into 
bottles,  of  the  size  and  form,  used  by  A.  B.  He 
provides  each  bottle  with  a  wrapper  or  covering, 
of  stiff  yellow  paper,  and  on  one  side  affixes  a 
label  of  pink  paper,  on  which,  in  vermillion  and 
blue  letters,  in  the  same  fanciful  arrangement — 
in  the  like  form,  and  of  the  same  size,  the  precise 
words  are  printed,  which  are  contained  in  the  label 
of  A.  B.  —  except — that  he  neither  copies  nor 
imitates  the  proper  name  of  A.  B.  but  carefully 
substitutes  his  own  name  therefor — and  calls  his 
gin,  "  E.  F's  Chib  House  Gin." 

Now,  in  such  a  case,  in  accordance  with  the  well 
established  principles,  and  the  uniform  ciu'rent  of 
authority,  E.  F.  has  been  guilty  of  a  fraudulent 
invasion  of  the  right  of  property  of  A.  B.  in  his 
trade  mark — notwithstanding  that  he  has  not  used 
in  his  label,  any  words,  letters  or  marks — which, 
by  themselves,  he  had  not  as  perfect  a  right  to  use, 
as  A.  B.  had. 

But  these  words,  letters  or  marks,  have  been  so 
used  by  E,  F. — with  such  an  exact  similitude,  in 
all  respects,  to  the  manner  of  their  use  by  A.  B. — 
as  to  divert  the  attention  of  the  purchaser,  from 


214  -       THE    LAW  OF 

the  single  point  of  variation,  namely,  the  name 
and  address  of  A.  B. —  which  E.  F,  had  no  right 
to  use,  in  any  manner — and  to  produce  the  impres- 
sion that  the  Club  House  Gin  of  E.  F.  is  in  truth, 
the  Club  House  Gin  of  A.  B. 

This  being  so,  the  variation  in  the  label,  by  the 
substitution  of  the  name  and  address  of  E.  F.  for 
that  of  A.  B.,  becomes  wholly  immaterial — for  the 
sole  purpose  of  that  variation,  when  regarded  in 
connection  with  the  elaborate  simulation  in  every 
other  respect — was,  not  to  communicate  a  truth, 
but  to  escape  the  penalty  of  a  falsehood. 

"A  fraud  was  designed"  (to  use  the 
language  of  the  same  learned  judge)  ''an 
"  attempt  was  made  to  reahze  an  unlawful 
"  gain,  but  it  was  apparent  that  the  variation 
"  in  the  label  was  made,  in  the  delusive  belief 
"  or  hope,  that  thereby,  an  injunction  might  be 
"  avoided,  and  a  claim  for  jDrofits,  or  damages, 
"  might  be  repelled." 

But,  this  is  a  violation  of  the  right  of  property 
in  a  trade  mark,  which,  upon  the  principles  estab- 
lished as  the  basis  of  the  protection  which  the  law 
extends  to  such  property,  will  be  suppressed,  by  the 
extraordinary  powers  of  a  court  of  equity,  and  its 
fruits  intercepted  and  restored. 

Third — A  violation  of  property  in  a  trade  mark, 
consists,  not  only  in  a  false  representation  —  and  a 


TRADE  MARKS.  215 

false  representation  by  a  copy  or  imitation  of  those 
letters,  words,  marks,  signs,  symbols  or  devices, 
wliicli  another  has  appropriated,  and  had  a  right  to 
appropriate,  as  designating  his  manufactnre,  and 
distinguishing  the  same  from  all  others — but,  in 
the  third  place,  it  must  be  such  a  false  representa- 
tion, and  such  a  copying,  imitation,  or  colorable 
imitation,  as  is  calculated  to  mislead  and  deceive, 
and  induce  the  belief  that  the  goods  to  which  the 
simulated  trade  mark  is  affixed,  are  the  goods  of 
the  true  owner  of  the  trade  mark. 

Upon  this  point — the  question  which  first  pre- 
sents itself,  is — who  are  the  persons  to  be  misled, 
by  the  false  representations  and  the  deceptive 
imitations  1  Are  tliey  dealers  in  the  article  1  Per- 
sons who  purchase  to  sell  again  l  Are  they  con- 
sumers, the  public  generally  1  Are  they  persons 
who  exercise  caution,  prudence  and  intelligence  in 
then"  business  affairs  —  and  are  not  likely  to  be 
easly  misled — or  are  they  the  incautious — the 
ignorant  and  unwary  1 

There  does  not  seem  to  be  any  question  as  to 
the  true  principle  here  involved. 

The  injury,  threatened  or  committed,  by  the 
violation  of  the  right  of  property  in  a  trade  mark,  is 
the  unlawful  appropriation  of  the  j)rofits,  which,  of' 
right,  and  in  justice,  belong  to  him,  who  by  his 


216  THE    LAW  OF 

superior  skill,  industry,  energy  or  entei'prize,  has 
established  a  reputation  for  his  goods,  and  caused 
them  to  be  known  and  sought  for,  under  a  particu- 
lar designation — and  also,  the  injury,  threatened  or 
committed,  (where,  as  in  most  cases,  the  goods  of 
the  imitator  are  of  an  inferior  value  or  quality,)  to 
the  established  reputation  of  the  original  manufac- 
turer, the  inferior  article,  being  mistaken  for  his. 

Now,  it  seems  to  us,  obvious,  that  the  question, 
who  are  the  persons  to  be  misled  or  deceived — has 
reference  altogether  to  the  extent  of  the  injury 
tlu-eatened  or  inflicted.  It  cannot  be  any  the  less 
a  wrong — because  very  few  persons,  in  a  compara- 
tively unimportant  class,  can  be,  or  are  at  all  likely 
to  become,  subjects  of  the  deception. 

If  the  copying  or  imitation  of  the  trade  mark 
of  another,  be  made,  in  such  a  manner  as  to  be 
manifestly  designed  and  calculated,  to  deceive  any 
one,  it  matters  not  if  he  be  the  most  unwary,  care- 
less or  illiterate  purchaser,  precisely  to  that  extent, 
it  is  a  wrong,  demanding  the  interposition  of  the 
law,  in  its  redress. 

Such  has  often  been  declared  to  be  the  true 
principle,  upon  which  the  jmisdiction  of  the  comis 
is  invoked,  for  the  protection  of  property  in  trade 
marks. 

In  the  application  of   this  principle  it  will  be 


TRADE   MARKS.  217 

found,  that  the  authorities  are  not  entirely  har- 
monious. 

Precisely  as  learned  judges  are  disposed  to 
regard  with  favor  and  encoui-agement,  this  peculiar 
character  of  property — or,  on  the  contrary,  are 
inclined  to  consider  it  an  encroachment  upon 
natural  rights,  and  an  obstacle  to  honest  competi- 
tion, do  we  find  them  granting  or  withholding 
equitable  relief,  by  their  views  of  the  nature  and 
extent  of  the  deception,  wliich  the  alleged  simu- 
lated trade  mark  discloses. 

In  Croft  vs.  Day,  7  Bea.,  84  —  Lord  Langdale 
declares  the  test  to  be : 

"  Whether  the  contrivances  of  the  defend- 
"  ants  were  calculated  to  mislead  the  bulk  of 
"  the  unwary  public." 

And  in  Craivshay  vs.  Thom^'ison,  4  Man.  &  Gr., 
357  —  substantially  the  same  test  is  laid  do^vn  by 
Mr.  Justice  Maule,  thus  : 

"  The  question  was,  whether  the  defendants' 
"  marks  have  so  close  a  resemblance  to  the 
"  plaintiff's,  as  to  be  calculated  to  deceive  the 
"  unwary,  and  to  injure  the  sale  of  the  plain- 
"  tiff's  goods." 

In  Welch  vs.  Knott,  4  Kay  &  Johns.,  747— the 
plaintiff  was  a  manufacturer  and  vendor  of  soda 
water  in  bottles — labeled, 

28 


218  THE   LAW   OF 

"  Schweppe  &  Co.,  51  Berners  St., 

Oxford  St — Genuine  Superior 

Aerated  Waters." 

The  labels  were  colored  and  pasted  over  corks — , 
Connected  vnth  the  above  words  was  a  fac  simile 
sig-natm-e — "J.  Schweppe  &  Co." — with  the  addi- 
tion —  '*  By  special  appointment,"  and  upon  the 
label  was  the  figure  of  a  crown,  &c. 

The  defendant  sold  soda  water  in  bottles — 
stamped  like  the  plaintiff's,  A  label  of  a  similar 
color,  was  pasted  over  the  cork.  On  this  label  was 
printed,  instead  of  "J.  Schweppe  &  Co.,"  the 
words  "  Soda  Water,"  in  characters  similar  to  those 
in  which  the  signatm'e  was  printed  on  the  plaintiff's 
label  —  a  similar  crown — with  the  other  devices, 
were  on  the  defendants'  label. 

The  resemblance  was  so  close,  as  to  deceive  the 
eye  upon  a  casual  observation — but  a  close 
inspection  would  disclose  the  dissimilarities. 

Yet,  upon  these  facts,  the  learned  Chancellor, 
(Cranworth)  refused  the  injunction  prayed  for,  in 
the  absence  of  extrinsic  proof 

"  That  the  defendants  had  used  the  label  on 
"  their  bottles,  with  the  intent  —  or  so  as  in 
"  fact,  to  mislead  the  public." 

In  the  case  of  Partridge  vs.  Menck,  2  Sand.  Ch. 
R.,  622,  the  facts  as  they  are  reported,  in  relation 


TRADE   MARKS.  219 

to  the  imitation  by  the  defendant,  of  the  i)lain- 
tiff's  label,  upon  his  boxes  of  matches,  were  even 
stronger,  as  evincing  a  manifest  design  to  mislead 
and  deceive,  than  in  the  case  of  Welch  vs.  Knott. 

Certainly,  nothing  but  such  a  design,  could  have 
induced  the  copying  by  the  defendant,  upon  his 
label,  among  other  things,  of  the  figure  of  a  bee- 
hive— which  was  a  prominent  feature  in  the  label 
of  the  plaintiffs.  Yet,  uj)on  careful  examination, 
and  especially  on  the  removal  of  the  lid  or  cover 
of  the  box,  containing  the  matches,  dissimilarities 
were  discoverable. 

The  learned  yice-Chancellor  (Sandfoed)  denied 
the  injunction,  and  in  doing  so — uses  the  follow- 
ing language : 

"  Altllo^^gll  tlie  court  will  hold  any  imitation, 
"  colorable,  which  requires  a  careful  inspection, 
"  to  distinguish  its  marks  and  appearances, 
"  from  those  of  the  manufacture  imitated,  it 
"  is  certainly  not  bound  to  interfere,  where 
"  ordinary  attention,  will  enable  a  purchaser 
"  to  discriminate. 

"  It  does  not  suffice,  to  show  that  persons 
"  incapable  of  reading  the  labels,  might  be 
"  deceived  by  the  resemblance. 

"  It  must  appear  that  the  ordinary  mass  of 
"  purchasers,  paying  that  attention,  which  such 
"  persons  usually  give,  when  buying  the  article 
"  in  question,  would  probably  be  deceived." 


220  THE   LAW   OF. 

This  decision  was  sustained  by  the  Chancellor, 
[Walwokth,]  on  appeal — and  the  language  of  the 
learned  Vice-Chancellor  has  been  often  quoted, 
with  approval,  in  subsequent  American  decisions. 

In  the  case  of  The  Merriinac  Manufacturing 
Company  vs.  Garner,  2  E.  D.  Smith,  387 — the 
decision  of  the  majority  of  the  Court  of  Common 
Pleas  of  the  city  of  New  York,  in  accordance  with, 
and  based  upon,  that  of  Partridge  vs.  Menck,  denied 
the  injunction  prayed  for,  where  the  facts  seemed 
to  warrant  the  conclusion  that  the  defendants  had 
deliberately  contrived  their  trade  marks,  upon  the 
goods  of  their  manufacture,  with  the  fraudulent 
design  of  passing  them  off  as  the  goods  of  the 
plaintiffs'  manufacture. 

"  Courts  are  not  bound  to  interfere,"  —  says 
the  learned  judge,  in  giving  tlie  opinion  of  the 
majority  of  the  court — "Where  ordinary 
"  attention,  will  enable  a  purchaser  to  discrimi- 
"  nate." 

An  injunction  in  that  case  had  been  granted  in 
the  first  instance,  by  Mr.  Justice  Woodkuff  (now 
of  the  Superior  Court  of  the  city  of  New  York) 
and  his  very  able  opinion  given  on  the  hearing 
before  him,  was  adopted  as  his  dissenting  opinion, 
on  the  appeal  to  the  full  bench. 

The  current  of  authority  upon  this  point  —  as 


tradp:  marks.  221 

we  have  seen  by  tlie  cases  heretofore  reviewed, 
cannot  be  regarded  as  sustaining  the  views 
expressed  by  Vice-Chancellor  Sandford — and 
affirmed  in  the  cases  we  have  cited — and  it  cer- 
tainly would  seem,  upon  a  careful  consideration, 
that  such  views,  however  they  may  at  first  appear 
reasonable  and  just,  are  not  altogether  consonant 
with  the  liberal  and  benignant  policy  of  the  law, 
in  protecting  property  in  trade  marks. 

Why  should  courts  withhold  then-  protection,  or 
refuse  to  interfere,  "  where  ordinary  attention  will 
enable  a  purchaser  to  discriminate "?" 

Upon  an  examination  of  the  numerous  reported 
cases  of  alleged  violation  of  property  in  trade 
marks,  both  in  the  English  and  American  books, 
it  will  be  found  that,  in  the  large  majority  of 
instances,  the  studied  design  of  the  fraudulent 
trade  mark  imitator,  has  been,  so  to  contrive  his 
similitudes  as  to  be  enabled  to  say : 

"  Had  you  been  but  ordinarily  attentive,  as 
"  a  prudent  man  always  should  be,  you  would 
"  have  discovered  the  dissimilarities,  and  have 
"  escaped  deception ;  " — 

at  the  same  time  that  his  cunning  simulations, 
have  all  the  while  been  contrived  and  ingeniously 
designed,  and  directed,  to  accomplish  the  precise 
purpose,  of  diverting  all  attention  from  the  discrim- 


222  THE   LAW   OF 

mating  dissimilarities — and  administering  a  fatal 
narcotic  to  ordinary  prudence. 

The  fraudulent  imitator  is  perfectly  willing  to 
hazard  the  detection,  which  his  half  concealed 
marks  of  dissimilarity,  may  enable  those  to  make, 
who  are  not  thrown  off  then'  guard  by  his  skilful 
simulations,  for  the  sake  of  the  profits  which  he 
reaps  from  those  whose  attention  he  succeeds  in 
diverting,  and  whose  piTidence  he  lulls  to  sleep. 

It  certainly  seems  to  us,  that  a  rigid  application 
of  the  doctrine  of  the  case  of  Partridge  vs.  Menck, 
would  result  in  a  denial  of  all  effectual  rehef  in 
the  large  majority  of  cases  of  pu-acy  upon  trade 
mark  property. 

The  better  doctrine — that  which  harmonizes 
with  the  true  policy  of  the  law,  and  is  sustained 
by  the  weight  of  authority,  is — that,  wherever, 
upon  the  face  of  a  label  or  trade  mark,  it  appears 
to  have  been  the  manifest  design,  to  effect  a  simili- 
tude, with  an  original  label  or  trade  mark — so  that 
deception  may  result,  and  the  goods  of  the  imitator 
be  therehy  sold  as  and  for  tliose  of  the  true  owner  of 
the  trade  mark — whether  such  deception  might  or 
might  not  be  avoided,  by  the  exercise  of  ordinary 
attention  and  prudence — an  injunction  should  issue. 

Upon  any  other  doctrine,  the  puate  upon  trade 
mark  property,  is  enabled  to  base  his  claim  to 


TRADE  MARKS.  223 

impunity,  upon  those  very  weaknesses  of  a  credu- 
lous public,  to  avail  of  which,  were  the  precise 
pm-pose  and  calculated  result  of  his  fraudulent 
contrivances. 

Should  it  come  to  be  understood,  that,  without 
fear  of  the  law's  restraint  or  redress,  one  might 
appropriate  to  himself,  the  gains  and  profits  to 
which  another  is  justly  entitled,  by  the  simulation 
of  his  trade  mark,  upon  the  spurious  goods  of  the 
wrong  doer's  manufacture  —  provided  that  the 
simulation  be  so  ingeniously  modified,  or  palliated, 
as  to  contain  some  points  of  dissimilarity,  which 
may  be  detected,  and  enable  the  purchaser  to 
discriminate  between  the  true  and  the  false,  by  the 
exercise  of  common  prudence  and  ordinary  atten- 
tion— property  in  trade  marks  will  no  longer  be 
protected — for  then,  every  simulation  will  be  thus 
characterized,  as  nearly  every  one  is  at  the  present 
time. 

If  it  be,  that  the  doctrine  of  the  cases  of 
Partridge  vs.  Menck,  and  The  Merrbnack  Maufac- 
turing  Company  vs.  Garner,  was  adopted  from  a 
supposed  application  of  the  rule  of  caveat  emptor, 
the  error  lies  in  an  incoiTCCt  discrimination  of  the 
person,  against  whom  the  wrong  is  committed,  in 
the  violation  of  trade  mark  property. 

It  has  never  been  doubted  that  an  action  will 


224  THE   LAW  OF 

lie  at  the  suit  of  the  purchaser  of  goods  of  a  spurious 
character,  or  inferior  quahty,  against  the  fraudu- 
lent imitator  of  an  original  trade  mark,  who  by  his 
colorable  imitations,  has  inveigled  him  into  the 
pmxhase,  on  the  supposition,  that  he  was  buying 
the  well  known  goods  of  the  genuine  manufactm'er. 

Such  was,  undoubtedly  the  early  case  in  the 
Year  Books,  of  the  Gloucestershh^e  Cloth  Merchant 
— reported  in  Cro.  Jac. 

But  even  in  such  an  action,  the  rule  of  caveat 
ejnptor,  however  rigidly  it  may  be  enforced,  in  cases 
where  it  may  be  apphed  without  a  violation  of  the 
fii'st  principles  of  justice — could  not  be  invoked 
for  the  protection  of  him,  whose  fraud  consists  in 
ingenious  and  successful  contrivances,  to  the  end, 
that  the  pm'chaser  shall  not  take  care. 

By  way  of  illustration, — take  the  facts  of  the  case 
of  Partridge  vs.  Menck — and  suppose  that  a  pur- 
chaser of  the  spurious  matches  of  Menck,  believing 
them  to  be  the  genuine  matches  of  "  Golsh,"  should 
bring  his  action  on  the  case  to  recover  damages  for 
the  deceit  practised  upon  him  by  Menck. 

The  defendant  says — "True  it  is,  that  the  label 
upon  the  boxes  containing  the  spmious  matches 
that  I  sold  to  the  plaintiff,  was  made  to  imitate 
that,  upon  the  boxes  of  matches  which  he  had 
previously  pm'chased  as  those  of  '  Golsh.'  " 


TRADE    MARKS.  225 

It  contained  the  beehive,  and  the  other  devices, 
arranged  in  the  same  manner  as  in  the  original 
labeL  It  also  contained  in  large  letters,  of  the 
same  character,  the  name  "A.  Golsh" — but  if  the 
plaintiff  had  but  raised  the  covering  upon  my 
boxes,  he  would  have  found  over  the  words  "  A. 
Golsh"  the  words — "manufactured  by  Menck,  late 
chemist  for" — and,  although  in  smaller  type  than 
the  words  "A.  Golsh,"  yet,  "perfectly  plain  and 
distinct,  and  printed  in  type  only  a  trifle  smaller 
than  the  capitals  used  in  our  recent  published 
reports."  To  be  sure,  I  intended  to  deceive  the 
plaintiff — but  he  should  not  have  been  deceived. 
I  designed  that  he  should  not  take  care — but  he 
should  have  taken  care.  My  contrivances  were 
calculated  to  lull  suspicion,  to  divert  attention, — 
but  he  should  have  suspected — ordinary  attention 
and  common  prudence  would  have  enabled  him  to 
detect  my  contrivances,  and  avoid  the  deception — 
but  such  attention  and  prudence  has  not  been 
exercised,  and  I  invoke,  on  my  behalf,  that  iiile 
which  declares  that  the  law  will  not  take  care  of 
him  who  refuses  to  take  care  of  himself." 

Without  any  very  violent  presumption,  a  person 
capable  of  committing  such  a  fraud,  may  be  sup- 
posed to  be  possessed  of  the  requisite  effi'ontery  to 
seek  impunity  for  the  offence,  at  the  hands  of  a 

29 


226  THE    LAW    OF 

court  of  justice,  upon  such  grounds  as  these — but 
we  should  unwilKngly  beheve  that  he  would  be 
able  to  find  any  respectable  counselor  of  the  coui't, 
willing  to  hazard  his  professional  repute  by  the 
serious  inteiiDOsition  of  such  a  defense. 

If,  then,  the  doctrine  of  caveat  eiwptor,  be  wholly 
inapplicable,  in  such  a  case,  even  at  the  suit  of  the 
purchaser  himself — how  much  less  applicable  is 
it — where  redress  for  the  wrong  is  sought  by  him 
who  could  not  have  avoided  the  injury,  by  any 
care,  prudence  or  attention  on  his  part — and  whose 
damage,  by  reason  of  the  wrong,  is,  by  many 
degrees  greater,  than  that  of  the  misled  pm*chaser. 

If  the  wrong  doer  may  not  defend  the  wrong,  as 
against  the  purchaser  whom  he  has  deceived,  by 
saying,  "  If  you  had  exercised  ordinary  attention, 
you  would  have  escaped  the  deception  " —  still  less 
should  he  be  able  to  do  so,  as  against  the  owner  of 
the  trade  mark — whose  profits  he  has  appropriated, 
and  whose  reputation  he  has  injm'ed,  by  sajdng, 
"  If  this  party,  this  careless  pm-chaser,  whom  you 
did  not  know,  and  could  not  control,  had  been  a 
man  of  common  prudence  and  sagacity,  and  had 
exercised  ordinary  attention,  I  should  not  have 
succeeded  in  my  contrivances  to  pass  off  upon  him 
my  infenor  and  spmious  goods,  as  and  for  your 
manufacture,  and  you  would  then  have  escaped  the 


TRADE   MARKS.  227 

injury,  which  my  fraud  was  designed  to  inflict  upon 
you." 

If  these  views  be  not  altogether  iUusory — then, 
the  administration  of  justice  in  the  protection  of 
trade  mark  propert}^,  in  accordance  with  the  true 
policy  of  the  law,  can  be  predicated  only  of  a 
strict  adherence  to  the  doctrine  which  declares 
that : 

"  Whenever,  upon  the  face  of  a  label  or 
"  trade  mark,  it  appears  to  have  been  the 
"  manifest  design,  to  effect  a  resemblance  to 
"  the  label  or  trade  mark  of  another,  so  that 
"  deception  may  result,  not  as  a  probability 
"  merely — but  as  a  possibility — and  the  goods 
"  of  the  imitator  may  be  thereby  sold,  as  and  for 
"  those  of  the  true  owner  of  the  trade  mark — 
"  an  injunction  ought  to  issue — whether  the 
"  deception  that  has  produced  or  might  pro- 
"  duce  this  result  might  or  might  not  be,  or 
"  have  been,  avoided,  by  the  exercise  of  ordi- 
"  nary  attention  and  prudence." 

What,  under  the  circumstances  of  any  particu- 
lar case — should  be  considered  and  held  to  be 
sufficient  evidence  of  "  ordinary  attention "  or 
"common  prudence  " — would  open  a  wide  door  for 
discussion,  and  the  adoption  of  such  a  test,  as  the 
basis  of  the  equitable  jurisdiction  of  the  court — 
would  remove  all  limit  to  the  exercise  of  an 
arbitrary  judicial  discretion. 


228  THE    LAW  OF 

But,  whether  a  particular  trade  mark,  alleged  to 
be  a  fraudulent  imitation  of  another,  discloses  upon 
its  face,  any  of  the  badges  of  simulation,  or 
whether  it  be  an  honest  designation,  indicating 
that  he  who  has  adopted  it,  relies  only  upon  the 
intrinsic  merits  of  his  goods,  for  his  success  in  their 
sale,  is — ordinarily  of  easy  determination. 

Whenever  an  imitation  is  apparent,  of  any  por- 
tion of  the  trade  mark  of  another,  which  has  been 
used  by  him  to  designate  the  merchandise  to 
which  it  is  affixed,  as  his  manufacture,  it  is  per- 
fectly safe  to  say — that  such  an  imitation  has  not 
been  made  with  an  honest  object. 

The  honest  competitor,  who  relies  solely  upon 
his  own  skill  and  industry  and  enterprise,  does  not 
require  a  resort  to  simulated  devices,  or  names  or 
marks. 

His  aim  and  purpose  is,  so  to  present  his  mer- 
chandise in  the  market,  that  it  shall  be  known  as 
his,  and  never,  by  any  chance,  be  sujDposed  to  be 
that  of  another,  and  thus  the  public  be  left  free 
to  choose  between  articles  avowedly  of  different 
origin. 


TRADE   MAKKS.  229 


The  right  of  property  in  trade  marks,  may- 
be violated  —  by  the  printer,  engraver  or  other 
mechanic,  who  prepares  the  forged  or  simulated 
label,  brand  or  mark — as  well  as  by  the  fraudu- 
lent manufacturer  or  dealer,  who  causes  it  to  be 
prepared,  or  adopts  and  uses  it  upon  his  merchan- 
dise, and  such  violation  may  in  like  manner  be 
prevented  or  redi'essed,  by  proceedings  in  equity 
or  at  law. 

The  recent  case  of  Farina  vs.  Silverlock,  4  Kay 
&  Johns.,  650, — is  in  point,  as  illustrative  of  this 
salutary  doctrine. 

The  defendant  was  a  printer,  and  as  such,  pre- 
pared certain  labels,  in  colorable  imitation  of  those 
used  by  the  plaintiff,  upon  his  bottles,  containing 
the  celebrated  liquid,  known  as  "  Farina's  Cologne." 

These  labels  were  sold  by  the  defendant,  to  any 
person  applying  for  them,  although  it  was  pre- 
tended that  they  had  been  purchased  in  good  faith 
by  persons,  for  the  purpose  of  being  applied  to 
the  bottles  containing  the  plaintiff's  own  manufac- 
ture, from  which  the  labels  had  been  lost. 

But  the  learned  Lord  Chancellor  ordered  an 
injunction  to  issue,  notwithstanding  the  possibility 
that  some  of  the  labels  might  have  been  purchased, 
bona  fide — and  says : 


230  THE  LAW    OF 

"  The  ground  of  tliis  equity  is  —  that  the 
"  defendant,  by  knowingly  printing  labels,  in 
"  imitation  of  the  plaintiff's  trade  mark,  and 
"  selling  them  to  any  one  who  asked  for  them — 
"  was  supplying  the  means  of  committing,  and 
"  was  thus  a  party  to,  frauds,  which  courts  of 
"  equity,  will  interfere  to  stop  at  their  source^ 

The  injury  inflicted  by  the  invasion  of  trade 
mark  property,  is  by  no  means  limited  to  the 
wrongful  appropriation  by  the  fraudulent  manu- 
facturer or  dealer,  of  the  pecuniary  profits  which 
of  right  appertain  to  the  true  owner  of  the  trade 
mark,  whose  merchandise  the  pm'chaser  believed 
himself  to  be  buying". 

In  many  cases,  by  far  the  greater  injury  which 
ensues,  results  from  the  loss  of  that  good  name  and 
reputation,  which  the  original  manufacturer  had 
acquired  for  his  merchandise,  by  his  superior  skill 
and  industry,  as  well  as  by  his  integrity— ra  repu- 
tation which  is,  in  one  sense,  the  good  will  of  his 
business — inspiring  and  retaining  the  public  confi- 
dence, and  thereby  secm-ing  a  constant  demand, 
and  ready  sale,  for  his  productions. 

The  fraud,  and  falsehood,  and  forgery,  of  him 
who  copies  or  imitates  his  trade  mark,  and,  placing 
it  upon  a  spurious  or  inferior  article,  induces  a 
public  belief  that  the  spurious  article  is  the  manu- 
facture  of    him   in   whom   they   had  theretofore 


TRADE    MARKS.  231 

reposed  so  much  confidence,  is,  in  effect,  a  robbery 
of  his  reputation,  which,  imchecked,  must  end  in 
the  withdi'awal  of  pubhc  confidence,  and  the  con- 
sequent destruction  of  his  estabhshed  business. 

It  is  undoubtedly  true,  that  in  some  instances, 
the  article  to  which  the  simulated  trade  mark  is 
attached,  may  be  equal  in  quality  and  value,  to 
that  of  the  established  manufacture — the  pm-pose 
in  such  case,  being",  to  avail  of  a  reputation  already 
acquired,  to  facilitate  sales,  and  the  more  speedily 
to  realize  profits. 

It  is  obviously  quite  immaterial  to  the  determi- 
nation of  the  question  whether  an  injunction  should 
or  not  issue,  in  a  case  of  alleged  invasion  of  trade 
mark  property — to  ascertain  the  relative  merits  of 
the  respective  articles  of  merchandise. 

Wherever  it  is  made  to  appear,  by  inspection  or 
extrinsic  proof,  that  the  trade  marks  of  a  manu- 
facturer or  dealer,  have  been  copied  or  imitated, 
upon  the  merchandise  or  manufacture  of  another, 
the  law  presumes  it  to  have  been  done,  with  the 
fraudulent  intent  and  purpose,  of  inducing  the 
public,  or  those  dealing  in  the  article,  to  believe 
that  the  goods  falsely  designated,  are  those  of  the 
original  manufacturer,  and  of  thereby  supplanting 
him  in  the  good  will  of  his  trade  or  business. 

No  proof,   that  the  merchandise   to  which  the 


232  THE  LAW    OF 

simulated  trade  mark  is  attached,  is  equal,  or 
even  superior,  in  quality  and  value,  to  that  of  the 
true  owner  of  the  designating  brand,  can  tend  to 
rebut,  or  diminish  the  force  of  this  presumption. 

We  therefore  find,  that  courts  of  equity,  uni- 
formly refuse  to  consider  the  question  of  superior 
or  inferior  quality — or  to  allow  any  evidence  to 
be  given  upon  the  subject. 

Wliere,  however,  redi-ess  for  the  wrong  inflicted, 
is  sought  at  law,  in  the  form  of  pecuniary  damage, 
the  question  of  the  true  character  of  the  article 
which  has  been  passed  off  as  that  of  the  plaintiff, 
by  means  of  the  fraudulent  trade  mark,  may 
become  of  vital  consequence. 

It  is  not  doubted,  that  a  jury,  in  determining  the 
amount  of  then*  verdict,  to  which  a  party  plaintiff 
in  a  trade  mark  action,  may  be  entitled,  by  way 
of  indemnity  for  the  wrong  inflicted,  not  only  have 
a  right,  but  are  in  duty  bound,  to  take  into  con- 
sideration the  natural  and  probable  consequences 
of  the  wrong,  as  affecting  the  good  name  and 
reputation,  and  therefore  the  good  will,  of  the 
plaintiff's  business — and  to  this  end,  proof  of  the 
spurious  or  inferior  character  of  the  merchandise 
that  has  been  fraudulently  represented  as  his — 
may  be  pertinent  and  material. 


TRADE   MARKS.  233 


Actions  at  law,  for  the  recovery  of  damages,  as 
indemnity  for  an  invasion  of  trade  mark  property, 
are  comparatively  of  rare  occurrence. 

The  most  appropriate,  as  well  as  the  most 
efficient  remedy,  in  the  large  majority  of  cases,  is 
that  relief,  Avhich  it  is  the  peculiar  province  ot 
courts  of  equity  to  afford,  (in  the  language  of 
yice-Chancellor,  Sir  W.  Page  Wood)  "  in  the  fonn 
of  preventive  justice,  in  order  to  make  more 
effectual  a  legal  right." 

"  The  legal  right  is  that  which  any  person, 
"  designating  his  wares  or  commodities  by  a 
"  particular  trade  mark,  as  it  is  called — has — 
'  "  to  prevent  others  from  selling  wares  which 
"  are  not  his — marked  with  that  trade  mark — 
"  in  order  to  mislead  the  public — and  so  inci- 
"  dentlj,  to  injure  the  person  who  is  the  owner 
"  of  the  trade  mark." 

The  remedy  in  equity  for  a  violation  of  trade 
mark  property,  is  not  only  effectual — as  operating 
to  restrain  by  injunction  the  continuance  of  the 
wrong — but,  jmisdiction  being  once  assumed,  to 
this  end,  it  will  be  exercised  to  make  the  remedy 
complete,  and  to  avoid  a  multiplicity  of  suits — by 
a  final  decree  of  pecuniary  indemnity — the  amount 


234  THE    LAW   OF 

of  wliicli  it  will  determine,  if  need  be,  by  order- 
ing a  discovery  of  the  evidence  in  the  defendant's 
possession,  contained  in  books  of  account,  or  other- 
wise— by  compelling  the  rendition  of  a  full  and 
true  account  by  the  defendant,  of  all  the  sales  of 
the  merchandise  made  by  him,  marked  with  the 
trade  mark  of  the  plaintiff,  or  a  colorable  imitation 
thereof — or  by  reference  to  a  master,  or  other 
person,  on  the  application  of  the  plaintiff,  to  ascer- 
tain and  report  the  amount  of  his  damages  {vide 
Knott  \^.  Morgan,  2  Keen,  213;  MiUingtonY^.Fox, 
3  Myl.  &  C,  338 ;  Bailey  vs.  Taylor,  1  Rus.  & 
M.,  73 ;  Whittington  vs.  Wooler,  2  Swanst.,  428 ; 
Delondre  vs.  Shaw,  2  Sim.,  237  ;  Bramhall  vs.  Hal- 
comh,  3  Myl.  &  C,  737  ;  Clement  vs.  Maddicks,  22 
Law  Rep.,  428 ;  Stern  vs.  Carlan,  13  Law  Rep., 
360;  Bell  vs.  Locke,  8  Paige,  275  ;  Taijlor  vs.  Car- 
penter,  2  Sand.  Ch.  R.,  611,  612). 

That  the  extraordinary  powers  of  courts  of 
eqviity,  in  restraining  by  injunction  the  disposition 
of  articles  of  commerce,  under  particular  designa- 
tions, should  be  exercised  with  great  caution — so 
as  neither  to  jeopardize  general  or  individual 
interests — nor  to  invade  the  principles  and  policy 
of  the  law,  upon  which  the  right  of  protection  is 
based — will  not  be  denied. 

But,  while  on  the  one  hand,  such  caution  should 


TRADE   MARKS.  235 

be  at  all  times  observed — on  the  other — it  should 
never  be  allowed  to  degenerate  into  that  timidity, 
which  may  end,  in  regarding  all  cases .  as  invested 
with  circumstances  of  doubt,  sufficient  to  require 
the  establishment  of  the  legal  right  in  a  court  of 
law — before  restraint  by  injunction  should  be 
granted. 

We  have  already  had  occasion  to  consider  this 
subject  at  some  length,  in  connection  with  a  review 
of  the  opinion  of  the  court  in  the  case  of  Partridge 
vs.  Menck,  when  before  the  Vice-Chancellor,  and 
on  appeal  to  the  Chancellor  of  New  York. 

It  is  an  important  subject — involving,  as  we  con- 
ceive, the  whole  question  of  the  effectual  adminis- 
tration of  preventive  justice' — in  the  protection  of 
the  right  of  property  in  trade  marks. 

The  subject  here  again  arises,  as  a  natural 
incident  to  that  we  are  now  considering,  namely : 
the  remedy  for  a  violation  of  trade  mark  pro- 
perty. 

Having  referred  to  the  American  case  of  Pa7- 
tridge  vs.  Menck,  as  inculcating  doctrines,  which,  if 
once  established,  we  apprehend  would  operate  as  a 
fatal  barrier  to  the  only  available  and  effectual 
relief  in  cases  of  trade  mark  piracy,  in  this  connec- 
tion, we  refer  to  the  English  case  of  Spottisiooode  vs. 
Cla7-k — 10    Lond.   Jur.   Rep.,    1043  —  as   illustra- 


236  THE   LAW   OF 

live  of  what  we  cannot  avoid  regarding  in  this 
respect,  as  containing  an  expression  of  conclnsions 
which  can  hardly  fail  to  lead  to,  and  tenninate  in, 
a  like  result. 

The  plaintiff  in  the  case  of  Sjyottiswoode  vs.  Clark, 
was  the  proprietor  of  a  publication  called  "The 
Pictorial  Almanac,"  for  1847,  having  been  pre- 
pared, and  being  about  to  be  issued,  for  that  year, 
in  continuation  of  a  series,  of  the  like  publication, 
prepared  and  issued  for  the  preceding  years — each 
having  the  like  external  appearance.  The  cover 
was  decorated  with  a  pictorial  representation  of  the 
Greenwich  Observatory.  The  title  was  printed 
upon  the  cover,  together  with  words  descriptive  of 
the  character  and  contents  of  the  publication — 
and  in  size,  color  and  arrangement,  the  almanac  of 
each  year  bore  an  exact  resemblance  to  that  of  the 
preceding  year — with  the  exception  only  of  the 
figm'es  forming  the  date. 

The  defendant  had  prepared  an  almanac  for  the 
year  1847,  and  was  about  to  issue  the  same,  which 
he  called  "  Old  Moore's  Family  Pictorial  Almanac." 
The  contents  of  the  respective  almanacs  were  dis- 
similar— but  the  cover  prepared  for  that  of  the 
defendant,  was  almost  an  exact  resemblance  of  that 
of  the  plaintiff — having  the  same  pictorial  repre- 
sentation of  the  Observatory  at   Greenwich,  the 


TRADE  MARKS.  237 

same  title  and  description  of  contents,  in  the  same 
words,  and  printed  in  the  same  ^yle. 

This  imitation,  it  was  averred,  was  intentionally 
adopted  to  deceive  the  public,  by  inducing  the 
belief  that  the  defendant's  almanac  was  the  true 
continuation  of  the  plaintiff 's  series  —  and  thus  to 
injui'e  the  sale  of  the  plaintiff's  publication,  by  a 
wrongful  appropriation  of  his  patronage. 

The  Vice-Chancellor  of  England,  upon  these 
facts,  granted  an  injunction  to  restrain  the  defend- 
ant, 

"  From  selling  any  almanacs,  bound  in  paper 
'  wrappers,  or  covers,  or  other  wrappers,  or 
'  covers,  with  the  title,  '  Pictorial  Almanac,' 
'  printed  thereon,  or  having  any  other  title 
'  printed  thereon,  so  as,  by  colorable  represen- 
'  tation,  or  otherwise,  to  represent  the  almanacs 
'  printed  and  sold  by  the  defendant,  to  be  the 
'  same  as  those  printed  and  sold  by  the  plain- 
'  tiff,  for  the  year  1847." 

On  a  hearing,  upon  the  pleadings  and  proofs,  the 
Vice-Chancellor  denied  a  motion  to  dissolve  the 
injunction — and  an  appeal  was  taken  before  the 
Lord  Chancellor. 

Upon  the  appeal,  and  without  calling  for  a  reply 
to  the  argument  in  favor  of  the  injunction,  and  for 
the  affirmance  of  the  Vice-Chancellor's  decree, 
the  Chancellor  (Lord  Cottenham,)  dissolved  the 
injunction. 


238  THE    LAW  OF 

His  opinion  and  reasons  for  this  conclusion,  are 
substantially  as  Mlows : 

"  These  cases  depend  so  mucli  on  their  own 
"  circumstances,  that  all  that  the  court  can  do, 
"  is,  to  lay  down  principles  under  which  such 
"  cases  may  fall. 

"  I  have,  before  this,  had  occasion  to  express 
"  an.  opinion,  that  unless  the  case  be  very  clear-, 
"  it  is  the  duty  of  the  court  to  see  that  the  legal 
"  right  is  ascertained,  before  it  exercises  its 
"  equitable  jurisdiction.  For  this  there  are 
"  good  reasons. 

"  The  title  to  relief  depends  on  a  legal  right, 
"  and  the  court  only  exercises  its  jurisdiction 
"  on  the  ground  that  the  legal  right  is  estab- 
"  lished" 

Tliis  is,  unquestionably,  tlie  established  doctrine. 
It  is  as  distinctly  laid  dovrn  by  the  same  learned 
Chancellor  in  the  earlier  case  of  Motley  vs.  Down- 
man,  3  Myl.  &  C,  1  —  and  has  since  been  repeatedly 
recognized  and  affirmed,  both  in  English  and 
American  decisions. 

But,  was  not  the  legal  right  of  the  plaintiff 
Spottisicoode  clear  and  undeniable  l 

Is  there  any  doubt,  that  a  proprietor  of  a 
periodical  publication,  has  a  legal  right  to  prevent 
another  publisher,  from  issuing  a  publication  of  the 
like  general  character,  so  prepared  in  external 
appearance,  as  to  be  an  exact  resemblance  of  that 


TRADE  MARKS.  239 

of  the  original  proprietor,  and  to  induce  the  public 
belief,  that  it  is  the  true  and  genuine  publication, 
in  continuation  of  the  series  1 

This  was  expressly  held  in  the  case  of  Hogg  vs. 
Kirhy,  2  Ves.,  22G,  in  which  Lord  Eldon  declared, 
that  "the  publication  by  the  defendant,  of  what 
purported  upon  its  face,  to  be,  or  bore  the  external 
semblance  of  being,  a  continuation  of  the  magazine 
of  the  plaintiff — was  such  a  fraud  upon  the  good 
will  and  patronage  of  the  plaintiff's  periodical 
work,  as  to  call  for  the  interference  of  a  Court  of 
Chancery." 

In  the  American  cases  of  Snoivden  vs.  Noah, 
Hopkins,  347  —  and  Bell  vs.  Locke,  8  Paige,  74  — 
the  same  doctrine  was  distinctly  affirmed, —  so  that, 
in  a  case  like  that  of  Spottiswoode  vs.  Clark,  there 
would  seem  to  be  no  doubt  as  to  the  plaintift''s  legal 
right. 

The  learned  Chancellor  proceeds : 

"  One  objection  to  granting  an  injunction  in 
"  the  first  instance,  is,  that  it  promotes  after 
"  litigation — the  order  either  grants  an  injunc- 
"  tion,  and  compels  the  plaintiff  to  bring  his 
"action  —  or  suspends  the  injunction,  with 
"  liberty  to  the  plaintiff  to  bring  an  action. 

"  If  you  compel  him  to  go  to  a  court  of  law, 
"  you  promote  litigation,  and  this  course  is 
"  forced  upon  parties,   at  a  time  when  their 


240  *  THE    LAW  OF 

"  feelings  are  deeply  engaged  in  prosecuting 
"  tlieir  imaginary  rights." 

If  the  effect  of  granting  an  injunction  in  the 
first  instance,  were,  to  promote  after  litigation,  it 
would  indeed  be  a  very  serious  objection — but 
sui'ely,  the  experience  of  courts  of  equity,  in  con- 
troversies of  this  nature,  abimdantly  proves  the 
truth  of  the  converse  of  this  proposition.  Why  is 
the  plaintiff  compelled  to  bring  his  action  at  law, 
as  a  consequence  of  granting  the  injunction  1  This, 
to  be  sm'e,  is  all  that  he  can  do,  if  an  injunction 
be  denied  him,  and  he  determine  upon  a  further 
prosecution  of  his  rights,  but  if  an  injunction  be 
granted,  in  the  great  majority  of  trade  mark 
controversies,  the  protection  which  that  restraint 
affords,  is  all  the  remedy,  and  the  entire  relief, 
that  is  desired.  The  efforts  of  the  defendant  are 
directed  towards  procuring  a  dissolution  of  the 
injunction.  To  tliis  end,  he  brings  to  his  aid  all 
the  facts  and.  circumstances,  which  he  could  invoke 
in  his  behalf — in  the  defense  of  an  action  at  law 
—  and  failing  to  accomplish  this  object,  the  liti- 
gation, as  a  general  consequence,  there  terminates. 

In  the  case  before  the  Lord  Chancellor,  an 
injunction  would  have  been  the  plaintiff's  adequate 
and  complete  relief — and  the  necessity  of  any 
after  litigation  at  all,   could  only  have   been  the 


TRADE    MARKS.  241 

consequence  of  a  denial  of  the  injunction,  thereby- 
enabling  the  defendant  to  commit  the  alleged 
wrong — and  competing  the  plaintiff  to  seek 
redress  in  damages. 

The  Lord  Chancellor  proceeds : 

"  There  is  another  objection,  which  is,  that 
"  the  court  expresses  a  strong  opinion,  (and  it 
"  ought  to  be  a  strong  opinion,)  and  then  sends 
"  the  right  to  be  tried.  I  think  it  better  that 
"  the  court  should  refrain  from  expressing  such 
"  an  opinion." 

It  is  obvious  that  this  objection  must  apply  to 
all  cases,  alike,  and  with  the  like  force  —  if,  in 
truth,  there  be  any  force  in  the  objection. 

But  we  cannot,  we  confess,  perceive  the  neces- 
sity— in  the  event  that  the  defendant  persists  in 
the  trial  of  the  legal  right,  notwithstanding  the 
granting  of  the  injunction  by  one  cornet,  and  the 
refusal  to  dissolve  the  injunction  by  another,  and 
an  appellate  tribunal — of  such  decision,  exercising 
the  slightest  influence  in  the  determination  of  the 
right,  on  the  trial  of  the  action  at  law. 

But  suppose  that  such  decision  could  properly 
and  legitimately  be  brought  before  the  com't  and 
jury  upon  the  trial,  to  influence  their  deteimina- 
tion — is  it  not  obvious,  if  the  injunction  prayed 
for  is  denied,  or  is  dissolved  after  a  hearing,  in 

31 


242  THE    LAW  OF 

which  the  plaintiff  presents  all  the  evidence  that 
his  case  allows — that  the  court,  by  such  decision, 
expresses  an  opinion  adverse  to  the  right,  just  as 
strong,  and  calculated  in  like  manner,  to  influence 
the  determination  of  the  issues  in  the  trial  of  the 
legal  right — against  the  plaintiff's  claim? 

It  certainly  seems  to  us,  that  if  an  objection  of 
this  nature,  be  allowed  to  have  any  weight  at  all — 
precisely  to  that  extent,  it  must  paralyze  the  arm, 
in  whose  strength  rests  the  strong  hope  of  succor 
and  protection,  against  fraudulent  invasions  of 
property  in  trade  marks. 

"  But,  after  all,"  says  tlie  Lord  Chancellor 
again,  "  the  chief  objection  is,  that  the  court 
"  runs  the  risk  of  doing  the  greatest  possible 
"  injustice.  Consider  what  would  be  the  result 
"  in  this  case.  If  this  publication  is  not  per- 
"  mitted  to  be  issued  within  the  next  month, 
"  the  principal  sale  will  be  lost.  This  is  clear. 
"  It  is  an  almanac  for  1847  —  and  therefore,  to 
"  restrain  the  defendant  till  after  the  Spring 
"  Assises  —  what  use  would  it  then  be  to  him, 
"  if  he  was  found  to  be  in  the  right?  You 
"  would  take  money  out  of  his  pocket,  and 
"  give  it  to  nobody,  and  at  the  same  time,  a 
"  great  and  irremediable  injustice  might  be 
"  committed." 

The  answer  to  all  this,  is  obvious,  and  is  simply 
this — The  plaintiff  did  not  seek  to  restrain  the 


TRADE  MARKS.  243 

defendant's  publication,  at  all,  but  only  to  prevent 
his  sending  it  forth,  with  such  a  cover  or  wrapper 
upon  it,  as  would  inevitably  accomplish  the  fraud- 
ulent purpose  manifestly  intended — namely,  to 
induce  the  public  to  believe  that  it  was  the 
plaintiff 's  almanac — and  therefore  purchase  it,  as 
such. 

And  such — and  such  only,  was  the  Vice-Chan- 
cellor's injunction,  which  the  learned  Chancellor 
dissolved. 

To  prevent  the  plaintiff  from  using  a  cover 
for  his  almanac  containing  a  pictorial  representa- 
tion of  the  Greenwich  Observatory,  with  title, 
printing  and  devices,  in  substantial  resemblance  to 
that  used  by  the  plaintiff,  was  surely  no  restraint 
upon  the  defendant's  publication — nor  could  it  be 
regarded  as  any  hardship  upon  the  defendant,  that 
he  should  be  compelled  to  adopt  a  different  cover — 
so  that  his  publication  should  rest  upon  its  own 
merits — and  not  be  allowed  to  depend  upon  false 
tokens  or  misleading  representations. 

"  As  to  the  particular  facts  of  tlie  case," 
the  Lord  Chancellor  says :  "If  the  parties 
"  separately  sat  down  to  invent  a  wrapper, 
"  there  is  certainly  a  remarkable  coincidence 
"  in  what  they  have  produced.  Both  covers 
"  represent  a  portion  of  Greenwich  Observa* 
"  tory,  and  profess  the  work  to  be,  for  all  sorts 


244  THE    LAW  OF 

"  of  persons.     It  is  difficult  to  believe  that  all 
"  this  is  accidental." 

In  other  words,  the  Lord  Chancellor  did  not 
believe  that  the  defendant's  cover  bore  an  acci- 
dental resemblance  to  that  of  the  plaintiff — but 
on  the  contrary,  that  it  was  an  intentional  imita- 
tion— if  an  intentional  imitation,  then  the  dishonest 
and  fraudulent  purpose  is  a  legal  presumption — and 
this  being  so,  and  the  right  of  the  plaintiff  being 
unquestionable — it  seems  to  us  that  this  was  pre- 
cisely the  case  in  which  the  injunction,  to  the 
extent  for  which  it  was  granted  by  the  Vice-Chan- 
cellor,  should  have  been  unhesitatingly  sustained. 


In  actions  at  law  for  the  violation  of  the  right 
of  property  in  trade  marks,  where  redress  is  sought 
in  damages — what  should  be  the  measure  of 
damages,  or  the  rule  by  which  the  amount  as 
adequate  indemnity  should  be  determined,  m  the 
event  that  the  plaintiff's  right  is  established,  is 
open  to  discussion. 

We  are  not  aware  of  any  case  in  which  the 
question  has  arisen  and  been  expressly  determined. 


TRADE    MARKS.  245 

In  Blqfield  vs.  Pmjne,  4  Barn.  &  Adol.,  410,  the 
court  held,  that  wherever  the  phxintiff  has  a  verdict, 
he  is  entitled  to  some  damages,  even  in  the  absence 
of  any  proof  of  actual  damage. 

The  order  usually  made  by  Com'ts  of  Chancery, 
that  the  defendant  keep  an  account  of  the  sales 
made  by  him,  of  the  merchandise  bearing  the 
alleged  simulated  trade  mark — to  the  end,  that  he 
pay  over  to  the  plaintiff  the  profits  resulting  from 
such  sales  —  would  seem  to  indicate  a  rule  of 
damage. 

But,  in  many — and  indeed  in  most  cases — such 
a  rule  would  be  an  imperfect  one — because  the 
damage  actually  sustained,  as  the  result  of  an 
infringement  of  a  trade  mark — (we  mean,  of 
course,  where  the  loss  of  reputation  does  not  enter 
into  the  account — by  reason  of  the  simulated 
article  being  of  a  spurious  and  inferior  quality)  — 
is  rather,  the  loss  of  the  profits  which  the  plaintiff 
would  have  realized,  by  the  sale  of  his  merchandise, 
and  which  he  has  been  prevented  from  making,  by 
the  fraudulent  acts  of  the  defendant,  than  the  amount 
of  the  profits  actually  realized  by  the  defendant. 

It  would,  unquestionably,  be  more  easy  to  ascer- 
tain the  precise  sum  of  the  defendant's  profits,  than 
to  determine  that  of  which  the  plaintiff  has  been 
deprived. 


246  THE   LAW   OF 

The  extent  to  wHch  the  defendant's  wrongful 
acts  has  actually  diminished  the  demand  for,  and 
the  sale  of,  the  plaintiff's  productions,  would,  in 
most  instances,  be  merely  conjectural,  and  quite 
beyond  the  scope  of  positive  proof. 

But,  wherever  that  extent  can  be  ascertained  by 
evidence — or  wherever  a  reasonable  approxima- 
tion to  it  can  be  had — the  plaintiff's  indemnity 
would  be  better  assui-ed  by  the  application  of  such 
a  rule  of  damage. 

The  rule  of  Courts  of  Chancery,  by  which  a 
fraudulent  defendant  is  compelled  to  account  for 
and  pay  over  to,  the  plaintiff,  the  profits  which 
have  resulted  from  his  sales,  is  doubtless  predicated 
upon  the  idea  that  such  profits  represent  the  gains 
which  the  plaintiff  would  have  realized  but  for  the 
defendant's  wrongful  acts.  But  in  many,  probably 
in  most  cases,  such  an  idea  would  be  exceedingly 
fallacious. 


The  civil  remedies  for  the  violation  of  property 
in  trade  marks,  whether  at  law  or  in  equity,  afford 
but  little  protection  to  the  public  against  the  frauds 


TRADE   MARKS.  247 

and  impositions  of  those  who  dress  their  spmious 
goods  in  the  guise  and  habihments  of  the  honest 
maniifactiu'er,  in  order  to  pass  them  off  upon  the 
unsuspicious  consumer. 

The  easily  won  profits  that  flow  from  such  an 
appropriation  of  the  reputation  of  another,  present 
too  powerful  a  temptation  to  the  unscrupulous,  to 
be  overcome  by  the  apprehended  possibility  of 
being  stripped  of  their  disguises,  and  compelled  to 
relinquish  their  ill-gotten  gains,  as  the  consequence 
of  a  costly  litigation. 

Hence  it  is,  and  to  mark  with  the  strongest  terms 
of  reprobation,  the  turpitude  of  an  act  of  invasion 
upon  the  trade  marks  of  a  manufacturer,  that  legis- 
lative enactments,  like  that  of  the  State  of  New 
York,  (R.  S.,  part  IV.,  title  6,  chap.  1,  sec.  49,) 
declare  it  to  be  a  misdemeanor,  punishable  by  fine 
and  imprisonment,  "to  forge  or  counterfeit,  or  cause 
to  be  forged  or  counterfeited,  any  representation, 
likeness  or  similitude,  copy  or  imitation  of  the 
private  stamp,  wrapper  or  label  usually  affixed  by 
any  mechanic  or  manufacturer  on  his  goods,  wares 
or  merchandise,  or  in  the  sale  thereof,  with  intent 
to  deceive  or  defraud  the  purchaser,  or  manufac- 
turer, of  any  goods,  wares  or  merchandise  what- 
ever." 

AYe  do  not  remember  to  have  seen  a  report  of 


248  TKE    LAW   OF 

any  prosecution  under  this  or  any  similar  penal 
statute,  but,  the  policy  of  such  enactments,  and  the 
necessity  of  then-  rigid  enforcement,  in  all  proper 
cases,  cannot  fail  to  be  fully  acknowledged  by  all 
who  have  a  just  appreciation  of  the  great  impor- 
tance to  the  public  interests  as  well  as  to  individual 
rights,  of  maintaining  inviolate,  that  peculiar  pro- 
perty which  serves  to  designate  and  identify  the 
goods,  and  wares,  and  merchandise  of  the  artisan, 
the  manufacturer,  and  the  merchant,  which  minister 
to  the  constant  necessities  of  all,  and  which  furnish 
the  sole  assurance  and  guaranty  of  their  genuine- 
ness, purity  and  integrity. 


TAJ3LE   OF  CONTENTS. 


CHAPTER  I. 

Page. 
Of  the  Nature  and  Character  of  Property  in  Trade  Marks,        9 

Earliest  judicial  records  of  recognition  of   property  in  trade 

marks, 10 

Powers  of  courts  of  equity  first  exercised  for  its  protection, ....       13 

The  peculiar  characteristics  of  property  in  trade  marks,  as  dis- 
tinguished from  copyright, , 14 

The  increased  value  and  importance  of  trade  mark  property,  and 

the  necessity  for  its  adequate  protection, 16 


CHAPTER  11. 

By  whom  Property  in  Trade  Marks  may  be  acquired, 19 

By  aUens  equally  with  citizens, 19 

Property  in  trade  marks,  inseparable  from  a  property  in  the  mer- 
chandize designated,  22 

May  belong  to  the  dealer  as  well  as  the  manufacturer, 23 

Exclusive  right  to  the  proper  name  of  an  article  of  merchandize 
as  a  trade  mark,  can  be  possessed  by  such  only  as  have  an 

exclusive  right  to  make  or  sell  the  specific  article, 23 

Wliether  the  proprietor  of  a  particular  place  of  manufacture  may 
thereby  become  possessed  of  an  exclusive  right  to  trade 

marks  connected  therewith, 27 

Such  a  doctrine  in  conflict  with  the  policy  of  tlio  law, 28 

Property  in  trade  marks,  protected  only  in  the  possession  of  the 

honest  manuflicturer  or  dealer, 3Q 

Forfeited  by  fraudulent  dealings  and  representations, 31 


250  CONTENTS. 

CHAPTER  III. 

Page. 

Of  the  manner  in  which  Property  in  Trade  Marks  may  be 

acquired, 46 

By  original  adoption,  appropriation  and  use, 47 

Extent  of  the  originality,  required, 48 

Property  acquired  by  transfer, 52 

Whether  transfer  of  the  "  good  will "  of  an  establishment  carries 
with  it  the  right  to  the  name  by  which  it  has  been  known 

as  a  trade  mark, 54 

Eeview  of  case  of  "  Howe  vs.  Searings" 55 

The  case  of  "  Compere  vs.  Bajou," 72 

Transfer  of  the  exclusive  right  to  manufacture  or  sell,  carries 
with  it  the  exclusive  right  to  the  use  of  the  name  as  a  trade 

mark, 80 

Property  in  trade  marks  acquired  by  operation  of  law, 81 

To  whom  it  goes  on  dissolution  of  partnership  possessing  it,  by 

decease  of  one  of  the  partners, 82 

By  bankruptcy, 83 

CHAPTER  IV. 

Of   the    REQUISITE    COMPONENTS   OF    TrADE    MaRKS    TO    ENTITLE  THE 

Manufacturer  or  Merchant  by  whom  they  are  adopted 
and   appropriated   to  protection  in  their  exclusive  use 

AS  Property, 85 

Statement  of  general  principles, 86 

In  their  application,  protection  extended  to  innkeepers,  to  the 

exclusive  right  to  the  name  of  hotel, 90 

To  proprietors  of  carriages,  coaches  and  lines  of  omnibuses, 91 

To  proprietors  of  places  of  public  amusement, 93 

To  proprietors  of  periodical  pubhcatious,  magazines,  newspa- 
pers, &c., 93 

The  true  purpose  and  policy  of  the  law,  stated, 97 

The  purpose  and  policy  of  the  law  requires  that  the  trade  mark 
entitled  to  protection,  shall  designate  the  origin  and  owner- 
ship of  the  manufacture, 98 

This  principle  illustrated  by  the  authorities, 100 

Cases  in  which  an  application  of  the  principle  may  deprive  a 
manufacturer  of  the  exclusive  use  of  his  own  name  as  a 
trade  mark, 105 


CONTENTS.  251 

Page. 
Generic  names,  and  terms  in  common  use  to  designate  things  or 
their  quahties,  not  susceptible  of  appropriation  to  exclusive 
use,  as  trade  marks,  but  only  such  as  indicate  the  origin, 

ownership,  or  place  of  manufacture, 114 

Review  of  the  English  cases  illustrative  of  this  principle, 116 

Review  of  the  American  cases  illustrative  of  this  principle, 123 

Statement  of  the  principles  established  by  the  authorities  reviewed,     136 
Objections  stated  to  the  principles  of  decision  of  "Fetridge  vs. 

Merchant," .158 

Objections  stated  to  the  principles  of  the  decision  of  "Burnett  vs. 

Phalon," 4* 177 

"Corwin  vs.  Daly,"  latest  American  case,  illustrative  of  the  estab-' 
lished  principles,  as  to  the  requisite  components  of  trade 
marks,  to  entitle  them  to  protection  as  property, 187 


CHAPTER  V. 

Of  the  Violation  of  Trade  Marks,  and  of  tue  Remedy  for 

SUCH  Violation, 202 

What  is  a  violation  of  a  trade  mark, 203 

Fraudulent  intent  need  not  be  proved,  is  a  legal  presumption 

from  the  proof  of  the  fact  of  imitation, 204 

If  innocence  of  fraudulent  design  could  be  proved  it  would  affect 

the  question  of  costs  in  equity, 205 

And  perhaps,  also,  that  of  damages  at  law, 207 

Character  of  the  false  representation  essential  to  constitute  a 

violation  of  trade  mark  property,  208 

False  representations  by  use  or  imitation  of  symbols,  colors,  or 
devices  of  any  kind,  not^Jcr  se,  indicating  origin  or  owner- 
ship, or  place  of  manufacture,  but  used  in  connection  with 
and  auxiliary  to  such  names ;  cases  stated,  as  illustrative  of 
the  doctrine,    209 

The  false  representation,  to  constitute  an  invasion  of  property  in 
trade  marks,  must  be  such  as  is  calculated  to  mislead  and 
deceive, ■ 215 

Statement  of  the  principle  as  to  the  nature  and  character  of  the 

deception,  and  the  essence  of  the  injury  thereby  inflicted,. .     210 

Whether  the  false  representation,  to  constitute  a  violation  of  a 
trade  mark,  must  be  such  as  is  calculated  to  deceive  the 
"bulk  of  unwary  purchasers"  only,  or  such  as  may  deceive 
any  one, ....    217 


252  CONTENTS.   ' 

Faox. 

The  latter  considered  the  better  doctrine,  and  objections  stated  to 
the  principles  of  the  decisions  of  "  Partridge  vs.  Menck,"  and 
of  "  The  Merrimack  Manufacturing  Company  vs.  Garner," . .     222 

For  the  protection  of  trade  mark  property,  courts  of  equity  will 
proceed  as  well  against  those  who,  in  any  manner,  aid  and 
assist  in  the  violation  as  against  direct  invaders, 229 

The  injury  resulting  from  violation  of  trade  marks,  not  always 

hmited  to  the  wrongful  appropriation  of  profits, 230 

Injury  to  reputation  of  manufacturer  or  merchant  by  the  sale  of 
a  spurious  or  inferior  article,  with  the  false  or  fraudulent 
designation, 

Question  of  the  relative  quality  of  the  manufacture  of  the  trade 
mark  imitator,  and  of  the  manufacturer  whose  trade  mark  is 
imitated,  wholly  immaterial  on  appUcation  for  an  injunction,     231 

Materiality,  as  affecting  the  question  of  damage, 232 

Eemedy  in  equity  for  the  violation  of  trade  mark  property,  the 

most  efficient,  appropriate  and  summary, 233 

Necessity  for  the  exercise  of  caution  in  extending  the  extraordi- 
nary powers  of  a  court  of  equity  for  the  protection  of  pro- 
perty in  trade  marks, 235 

Danger  of  timidity  in  the  exercise  of  equity  powers  over  the 
subject,  illustrated  by  the  American  case  of  "  Partridge  vs. 
Menck,"  and  the  EngHsh  case  of  "  Spottiswoode  vs.  Clark,"     236 

As  to  the  measure  of  damage  in  actions  for  the  violation  of  trade 

marks, 244 

Violation  of  trade  marks  by  statutes  declared  to  be  a  misde- 
meanor, punishable  by  fine  and  imprisonment, 246 


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